
csassT asq 

Book JiSL 



COPYRIGHT DEPOSITS 



LAW AND FACTS 



Patents and Inventions. 



A PRACTICAL AND LEGAL BUSINESS GUIDE 



DEVELOPING, PATENTING, PERFECTING, MANUFACTURING AND OPERATING 
INVENTIONS. COMPILED FROM A LIFE OF EXPERIENCE, 



WHAT TO DO AND WHAT NOT TO DO. 



Experience is the best teacher " and "ft is a wise man who profits 
from the experience of others." 



By HARVEY L. HOPKINS. 



See alphabetical index under both " Law and Facts "and 
quicklv tarn „o your case. 



AU6 9 188 






CHICAGO: 
CHAS. J. JOHNSON, PUBLISHER, 

105 & 107 MADISON ST. 

1887, 






COPYRIGHTED 

By Harvey L. Hopkins. 

1887. 



CONTENTS. 





PAGE. 


Introductory, .... 


5 


Rules of Practice and Patent Laws, . 


7 


Intrinsic Value of Inventions, 


8 


Development of Inventions, . 


IO 


Scientific Aid, . 


12 


Caveats, ..... 


13 


State of the Art, .... 


. 16 


Patentable Inventions, 


18 


Form, Size, Proportion, 


21 


Double Use, . . . . 


23 


Novelty, 


.23 


Utility, 


2 3 


Abandonment, . 


. 24 


Public Use, ..... 


25 


Joint Inventors, 


. 27 


Priority of Invention, .... 


28 


Procuring Patents, 


. 30 


Joinder of Inventions, 


34 


Specifications and Claims, 


. ^5 


Combinations, .... 


37 


Substantially — Meaning of, 


• 39 


Equivalents, ..... 


40 


Construction of Claims, 


. 41 


Defeating Patents, . 


43 


Patent Applied For, 


. 44 


Re -Issues, ..... 


46 


Disclaimer, .... 


• 49 


Marking Articles "Patented," 


5o 


Perfecting Inventions, 


. 52 



IV. 



CONTENTS. 



Simplicity, .... 
Special Machines and Devices, 
Material and Manufacture, 
Operating Inventions — 

Want of Means, 

Undivided Interests, 

Patent- Right Men, 

Lost Opportunities, 

Locations — Special, 

Locations — General, 

Devices for Attachment, 

Patent Agents and Patent Brokers, 

Introducing Inventions, 

Territorial and Shop Rights, 

Grants, 

Royalty, 

Licenses, 

Assignments, 

Partnership, 
Infringements, 
Infringers, • . 

Identity, . . , 

Validity of Patents, 
Void Patents, . 
Injunctions, 
Jurisdiction, 
Damages and Profits, 
Insolvency, 

Employer and Employe, . 
Experts, 

Foreign Patents, 
Index to Law, 
Index to Facts, .... 
For Table of Law Cases cited see next page 



PAGE. 

57 

■ 58 

59 



ALPHABETICAL LIST OF CASES CITED. 



Page. 
Adams v Burk, . . . . . • 87, no 

Adams v. Edward, ...... 24 

Agawam Co. v. Jordan, . . . . . 48, 119 

Ager's Inventions, Black's Opinion of, . . . 120 

American Ballast Log Co. v. Cotter, .... 104 

American Bell Telephone Co. v. Spencer, ... 37 

American Hide and Leather Splitting Co. v. Tool and Machine 

Co., ........ 26 

Ames v. Howard, ...... 36, 105 

Andrews v. Carman, . . . . . -42 

Andrews v. Fielding, , > . . . . 118 

Andrews, Etc., Turnpike Corporation v. Hay, . . .90 

Anthony v. Carroll, . . . . . 108 

Arnheim v. Finster, . . . . . -47 

Arnold v. Bishop, ...... 28 

Ashcroft v. Walworth, . . . . . .114 

Aiken v. Manchester Print Works, .... 81 



B 



Bain v. Morse, 

Bank of Columbia v. Patterson, 

Barrett v. Hall, 

Barry v. Crane Bros. Mfg. Co., 

Bartholomew v. Sawyer, et al., 

Bate Refrigerator Co. v. Gillett, 

Bates v. Coe, 

Batten v. Silliman, 

Bean v. Smallwood, 

Bedford v. Hunt, 

Bell v. Daniels, 

Bell v. Josselyn, 

Bennet v. Fowler, 

Black v. Munson, 



• 97 

90 

28, 105 

118 

44 
123 

97 
109 

39 

43 

24 

101 

34 
84 



VI. 



CASES CITED. 



Blanchard v. Eldridge, 

Blanchard v. Puttman, 

Blandy v. Griffeth, 

Bank v. Mfg. Co. 

Binney v. Annan, . 

Bloomer v. McQuewan, 

Bloomer v. Millenger, 

Boulton v. Bull, 

Boville v. Moore, . 

Bowen v. Morris, 

Boyd v. Brown, 

Boyd v. Cherry, 

Brighton v. Wilson, 

Brockway v Allen, 

Brooks v. Byan, . 

Brooks v. Fiske, 

Brooks v. Jenkins, 

Brooks v. Stolley, 

Brown v. Deere, Mansur & Co. 

Bryce v. Dorr, 

Burdell v. Denig, 

Burdell v. Estey, 

Butler v. Ball, 

Byane v. Farr, 



Cahoon v. Ring, 

Calhoun v. Richardson, 

Cammeyer v. Newton, 

Carew v. Boston Elastic Fabric Co. , 

Case v. Brown, 

Castle v. Hutchinson, 

Chabot v. Am. Buttonhole and O. S. Co, 

Chaffee v. Boston Belting Co., 

Chambers v. Smith, 

Clark Pomace Holder Co. v. Ferguson, 

Cleveland v. Towle, 

Clum v. Brewer, 

Colburn v . Schroeder, 

Cochrane v. Deener, . 

Collar Co. v. Vandusen, 



Page. 




87 


95, 9 6 , 


103 




119 




108 


. 


118 


. 81, 


no 


81 


, 83 




105 


94, 


105 




90 




81 


. 


27 




100 


. 


90 


. 


86 


. 


42 




106 


86, 99, 


121 


. 


34 




IOI 




84 


. 


96 




44 




99 




94 




IOI 


9 c 


> 9 1 




48 




98 




in 




117 


• 8i, 


no 




86 




38 




17 




67 




44 




106 




119 



CASES CITED. 



VII. 



Coltv. Mass. Arms Co., 

Commonwealth v. Ohio, etc. R. R. Co., 

Conkline v. Stafford, . 

Conoverv. Roach, 

Consolidated Fruit Jar Co. v. Whiting, 

Con. Wind Mill Co. v. Empire W. M. Co., 

Converse v. Cannon, 

Corn Planter Patent, 

Comely v. Marckwald, 

Cox v . Griggs, .... 

Cross v. Huntley, 



Davis v. Palmer, ..... 


22 


Day v. Cary, ..... 


. 9 2 


Delano v. Scott, ..... 


IO5 


Dennis v. Cross, . . . 


•37 


Densmore v. Schofield, .... 


114 


Dental Vulcanite Co. v. Witherbee, 


. 48 


Detmold v. Reeves, . . . . . 


39 


Deven's Opinion, . 


. 28 


De Witt v. Elmira Nobles Mfg. Co., 


66 


Dixon v. Moyer, ..... 


. 106 


Doubleday v. Roess, . . . . 


38 


Dresser v. Dresser, .... 


. 67 


Dunham v. Indiana and St. Louis R. R. Co., 


69 


Dunn v. Rector, etc., of St. Andrew' Church, 


. 90 


Dyer v. Rich, ...... 


. 91, 104 



Page. 
29 
. 101 
36 
• 23 
86, no 
. 118 



3o. 



Eagleton Mfg. Co., v. West, Bradley & Cary Mfg. Co , 

Eames v. Godfrey, 

Egbert v. Lippmann, ..... 

Electric R. R. Signal Co., v. Hall, 

Electric Telegraph Co., v. Brette & Little, 

Elizabeth v. Pavement Co., 

Emerson v. Hogg, ..... 

Enighv. B. &0. R. R. Co., .... 

Estabrook v. Dunbar, .... 

Evans v. Eaton, ..... 22, 84, 39, 105 



CASES CITED. 



Evans v. Kelly, . . 

Evarts v. Ford, 

Everest v. Buffalo Lubricating Oil Co., 



Page. 

27 



Fales v. Wentworth, 

Fifield v. Whittemore, 

Fleckner v. Bank of U. S,, 

Forbes v. Bars tow, 

Foss v. Herbert, 

Foster v. Moore, 

Fry v. State, 

Fuller & Johnson Mfg. Co., v. Barrett, 

Fuller v. Yen f zer, 



. 17 
24 

. 9° 
36, 48 
. 40 
6, 99 
. no 
120 
20, 96 



G 



Gage v. Herring, . 

Gage v. Kellogg, 

Gates v. Preston, . 

Gay lor v. Wilder 

Gibbs v. Hoefner, 

Gills v. Wells, 

Glue Co., v. Upton, 

Goodyear v. Berry, 

Goodyear v. Beverly Rubber Co., 

Goodyear v. Day, 

Goodyear v. N. J. Central R. R., 

Gordon v. Anthony, 

Gorham Mfg. Co., v. White, 

Gorton v . Butterworth, 

Gottfried v. Crescent Brewing Co., 

Gottfried v. Hack, 

Gottfried v. Miller, 

Gould v. Rees,. .... 

Graham v Geneva Lake Crawford Mfg. Co., 

Gray v. Hale, .... 

Greenwood v. Hotchkiss, 

Grover & Baker Sewing Machine Co., v. Butler 

Grover & Baker Sewing Machine Co., v. Sloat, 



49 
35 

84 
86, 87 

23 

96 
22 

43 
no 
no 

43 

114 

40 

35 

84 
84 
90 

96 

85 

24 

20 

no 

87 



CASES CITED. 



IX. 



H 





Page. 


Hailes v. VanWormer, 


• 38,39 


Hall v. Wiles, .... 


49, 5o 


Hammond v. Hunt, .... 


87 


Hammond v. Pratt,. 


. 92 


Hamilton v. Robbins,. 


91 


Hapgood v. Hewitt, 


118, 119 


Hapgood v. Rosenstock, 


118 


Harmer v. Playne, 


105, 106 


Harmon v. Bird, .... 


92 


Hartell v. Tilgham, 


. 118 


Hatch v. Hall, .... 


81 


Hawes v. Washburne, 


102 


Hawks v. Swett, . . , . 


. 68, 84 


Hawley v. Mitchell, 


. no 


Haworth v. Hardcastle, 


43 


Hay den v. Suffolk Mfg. Co., 


- 43 


Hays v. Sulsor, .... 


24 


Head v. Stevens, . . 


. 84 


Helm v. First Nat. Bank, 


no 


Henderson v. Cleveland Co., O., Stove Co., 


97, 100 


Hendric v. Sayles, .... 


90 


Henry v. Francestown Soapstone Co , 


. 25 


Herbert v. Adams .... 


90 


Herring v. Gas Consumers' Ass'n 


. 70 


Hill v. Whitcomb, 


87 


Hill v. Henry, . . . 


. 82 


Hoe v. Cole, ..... 


100 


Hoe v. Knap, 


. 107 


Hogg v. Emerson, .... 


• 34, 36 


Holmes Electric Protective Co. v. Metropolitan 


Burglar Alarm 


Co., . . . . ' . 


123 


Holmes v. Spaulding, 


. 91 


Hopkins v. Lee, .... 


84 


Hovey v. Henry, .... 


. 24 


Howe v Morton, 


98 


Howes v Nute, .... 


. 23 


Howe v. Williams, .... 


37 


Hotchkiss v. Greenwood, 


20, 28, 39, 106 


I 
Ivers v. Conover, 


. 113 



CASES CITED. 



Jacob v. Commissioners of Hamilton County- 
James v. Campbell, . 
Johnson v. Root, .... 
Joliet Mfg. Co. v. Dice, 
Jones v. Barker, .... 
Jones v. Sewall, . 

Judson v. Cope, .... 



K 

Kassv. Hawlowetz, 

Kelleher v . Darling, .... 

Kemper In. Re., .... 

Kendall v. Winsor, 

Kennedy v. Baltimore Ins. Co., 

Ketchum Harvester Co. v. Johnson Harvester C 

Keystone Bridge Co. v. Phoenix Iron Co., 

King v. Gedney, .... 

Knox v. Murphy, .... 



Lake Shore, etc., v. Car Brake Shoe Co., 

Latta v. Shawk, .... 

Lee v. Blandy, .... 

Lehigh Valley R. R. Co. v. Mellon, . 

LeRoy v. Tatham, 

Lighter v. Brooks, .... 

Littlefield v. Perry, 

Locomotive Engine Safety Truck Co. v. Penn. R. R. 

Lowell v. Lewis, 



Mc 



McClurg v. Kingsland, 
McComb v. Brodie, 
McCormick v. Seymour, 
McCcrmick v. Talcott, 
McDougallv. Fogg, 
McFarlane v. Price, 



Page. 
. I02 

47 

29, 40, 41, 44 

119 

. 25 

. 20, 45 

■ 43 



. 51 


20 


20 


24 


■ 90 


99 


42 


119 


. 39 



. 40 

96 

. 38, 96, 98 

37 

• 43 
101 

. 87, 91, 120 
Co., . 25 

• 23 



. 11/ 

2 3> 9 8 > 99 

20, 50, 85, [13 

100 

. 84 

105 



CASES CITED. 



XI. 



McKay v. Dibert, 
McKay v. Jaekman, 
McMillen v. Barclay, 



Page^ 
20 

84 

24, 26 



M 



Machine Co. v. Murphy, 


98 


Magic Ruffle v. Douglass, 


20 


Magoun v. New England Glass Co., 


117 


Maltby v. Angus, .... 


IOI 


Mann v. Bayliss, 


43 


Manfg. Co. v. Myers, .... 


• 38 


Many v, Jagger, .... 


22, 36, 103 


Marsh v. Harris Mfg. Co., 


. 83 


Marsh v. Pier, . 


84 


Marston v.'Swett, .... 


. 83 


Matthews v. Spangenberg, 


98 


Matthews v. Shoneberger, 


37, 40, 41 


Matthews v. Skates, .... 


41 


Matthews v. Wade, .... 


. 30 


Mayard In. Re., . 


21 


Maxheimer v. Meyers . 


• 34 


Merrill v. Yeomans, .... 


. 35, 42 


Merserole v. Union Pager Collar Co., 


. no 


Mevs v. Conover, 


48 


Middletown Coal Co. v. Judd, 


22 


Miller v. Bridgeport Brass Co., 


• 47, 49 


Miller v. Force, ..... 


. 103 


Miller & Pete.rs Mfg. Co. v. DuBrul, . 


23 


Millner v. Schofield, .... 


• 99 


Moody v. Fiske, . . 


34, 9 6 , 98 


Moore v. Marsh, ..... 


89,90 


Morse, et al v. O'Reilly, 


81 


Mott v. Hicks, . . 


. 90 


Mowry v. Whitney, .... 


113 


Murphy v. Eastham, 


. 98 


Myers v. Duker, .... 


100 



N 

National Car Brake Shoe Co., v. Terry Car & Mfg. Co. 
National Car Brake Shoe Co., v. Terre Haute Co. . 



101 

84 



XU. CASES CITED. 

Neilson v. Hartford, 

Nelson v. McMann 

Nesmith v. Calvert, 

New York Pharmical Association v. Tilden, 

Nicolson Pavement Co. v. Jenkins, 



Page. 
• 36 

88 
. 118 

90 
. 91 



Odiorne v. Winkley, 

Oliver v. Rumford Chemical Works, 

O'Reilly v. Morse, 



■ 31 

86 

12, 21, 106 



Packing Co. Cases, .... 






38 


Page v. Terry, . 


97, 


98, 


IO3, 121 


Parkhurst v. Kinsman, 


. 


48, 93, 97 


Patterson v. Kentucky, 






I IO, 112 


Pennock v. Dialogue, 


. 




. 26 


Pentlarge v. Kirby, .... 







52 


People v. Johnson, . 


- 




• 84 


Perkins v. Smith, .... 


. 


. 


IOI 


Perry v. Co-Operative Co., 






• 38 


Perry v. Corning, .... 


. 




89 


Pickering v. McCullough, 






• 38 


Pitts v. Hall, . . . . . 1 


2, 27, 28 


,67, 


6 9> JI 3 


Pitts v. Wemple, . 






. 41 


Planing Machine Co. v. Keith, 


. 




24 


Poppenhusen v. N. Y. Gutta Percha Co., 






99^ io 3 


Potter v. Crowell, .... 






IOI 


Potter v. Holland, . 






. 87 


Prime v. Brandon Mfg. Co., 


. 




114 


Prouty v. Ruggles, 


. 




9 6 , 99 


Putman v. Hollender, 


. 


. 


84 



Ranson v. Mayor of N. Y., 

Reckendorfer v . Faber, 

Reed v. Chase, 

Reedy v. Scott, 

Refrigerating Co., v. Gillett, et al. 



20, 2g, 114 

38 
. 48 

48 
. 108 



CASES CITED. 


xiii. 




Page. 


Reissnerv. Sharp, .... 


123 


Richv. Lippincott, .... 


25, 103 


Richardsan v. Noyes, 


TOO 


Roberts v. Harnden, .... 


I02 


Robinson Ex parte, .... 


III 


Roemerv. Simm, .... 


. 44 


Rowell v. Lindsay, .... 


96 


Ruffle Magic Co. v. Douglass, . 


20 


Runstetlerv. Atkinson, 


120 



Salmon v. Richardson, 

Sanford v. Merrimac Hat Co. 

Sanford v. Messer, 

Sarven v. Hall, 

Saxton v. Dodge, 

Sales v. Chicago & N. W. R. 

Schillinger v. Gunther, 

Schneider v. Pountney, 

Seammer's Appeal, 

Sewing Machine Co. v. Frame, 

Seymour v. Marsh, 

Seymour v. Osborne, 

Sharp v. Tift, . 

Shaw v. Cooper, 

Shelton v. Darling, 

Sickles v. Borden, 

Singer v. Walmsley, 

Slawson v. Railroad Co., 

Smith v. Elliott, . 

Smith v. Nichols, 

South v. Goodyear Dental Vul. Co. 

Spaulding v. Tucker, 

Stanley v. Hotel Corporation, 

Stanley Works v. Sargent & Co., 

Stansbury v. Taggert, 

Star Salt Caster Co. v. Crossman 

Stephens v. Cady, 

Stephens v. Elwell, . 

Stevens v. Gladding, 



101 

. 96 

87 
39. 9 6 

84 

. 100 

49, 112 

. 100 

117 
. 98 

43 
91, 96 

96 
. 26 

90 

• 94 
5o 
38 

• 37 
21 

. 103 

17 

. 90 

23 

. 40 

87, 93. 104 

. 114 

101 

• 114 



XIV. 

Stephens v. Pritchanl, 
Stevenson v. Railroad Co. 
Stimpson v. Woodman, 
Strauss v. King, 
Swain Turbine Mfg. Co. v 
Swift v. Whisen, . 



CASES CITED. 



Ladd. 



Page. 
34 

• 38 
39 

• 43 
47 
43 



Tatham v. LeRoy, 

Terry Clock Co. v. New Haven Clock Co. 

Theberath v. Celluloid Manfg. Co., 

Thompson v. Boisselier, 

Toledo Agricultural Works v. Works, . 

Tompkins v. Gage, .... 

Toucey's Opinions, 

Turnbull v. Weir Plow Co., 

Turrill v. Railroad Co.. . 



41 


. 105 


86 


20 


no 


• 37 


44 


. 89 


43 



u 

Union Paper Bag Co. v. Nixon, 

Union Paper Collar Co. v. White, 

Union Sugar Refinery Co. v. Matthieson & Co. 

United States, ex rel. Gordon v. Butterworth, 

United States v. Morris, 



37, 4i 
103 



Vance v. Campbell, 
Vogler v. Semple, 



23, 3i, 36, 96. 99 
• 35 



W 

Wade v. Metcalf, . 

Wallace v. Holmes, 

Waterbury Brass Co. v. New York Brass Co. : 

Wayne v. Holmes, 

Webber v. Virginia, . 

Webster v. New Brunswick Carpet Co., . 

Welling v. Crane, . 

Welling v. Rubber Harness Trimming Co., 

Wells v. Jacques, . 



93 
• 99 

43 

23, 43 

112 

25. 9 6 
38 

35, 9 6 
39 



CASES CITED. 



XV. 



o Packing & Provision 



Wescott v. Rude, ..... 

Western Union Tel. Co. v Baltimore & Ohio Tel. C 

Westinghouse, Jr. v. Gardner & Ranson Brake Co., 

Westlake v. Carter, 

Weston v. White, . 

Whipple v. Middlesex 

White v. Lee, 

Whittemore v. Cutter, 

Whiting v. Graves, 

Whitney v. Emmett, 

Whitney v. Mo wry, 

Wilbur v. Beecher, 

Wilkens v. Spafford, 

Wilcox v. Wilcox, 

Wilson v. Chickering, et a/, 

Wilson v. Coon, 

Wilson Packing Co. v. Chicag 

Wilson v Rousseau, 

Wilson v. Sanford, et a/, 

Wilson v. Singer Manfg. Co., 

Winans v. Denmead, 

Winans v. New York & E. R. R. Co., 

Winans v. New York & Harlem R. R. Co. 

Windmill Co. v. Empire Windmill Co., 

Window Screen Co. v. Boughton, 

Wing, et aL v. Warren, 

Wintermute v. Redington, 

Woodcock v. Parker, . 

Woodworth v. Hall, 

Woodworth v. Rogers, 

Woodman v. Stimson, 

Woolever v. Knapp, 

Wooster v. Handy, 

Worden v. Fish, 

Worley v. Loker Tobacco Co. 

Worswick Mfg. Co. v. City of Buffalo, 

Wyett v. Stone, 



Co. 
81 



Page. 


84, 


85 




47 




40 




106 




26 




43 


. 


84 




102 


. 


117 


• 26, 


104 


103, 


106 




21 


118, 


119 




67 




88 




36 


. 


104 


2, 9I, 


1 10 




109 




5i 


3 6 > 42 


, 98 




121 


25 


, 27 




118 




37 




48 


. 


97 




29 




48 




104 


20 


, 39 




67 




47 




27 




27 




37' 


26, 35 


• 98 



Yost v. Heston, 



28 



ABBREVIATIONS. 



Abb. — Abbott's Circuit Court Reports. 
Bald. — Baldwin's Circuit Court Reports. 
B. 6° A. — Banning & Arden's Circuit Court Reports. 
Barb. — Barbour's Supreme Court of New York Reports. 
Biss. — Bissell's Circuit Court Reports. 
Bl. — Black's United States Supreme Court Reports. 
H. Bl. — Henry Blackstone's (English) Reports. 
B latch. — Blatchford's Circuit Court Reports. 
Bond. — Bond's Circuit Court Reports. 
Brock. — Brockenbrough's Circuit Court Reports. 
Carp. P. C. — Carpmael's Patent Cases (English). 
Clif. — Clifford's Circuit Court Reports. 
Com. Dec. — Commissioners Decisions of Patent Office. 
Cow. — Cowen's New York Reports. 
Curt., C. C. — Curtis Circuit Court Reports. 
Dav. P. C. — Davis's Patent Cases (English). 
Deady — Deady's Circuit Court Reports. 
E. L. 6° E. — English Law and Equity Reports. 
Fed. Rep. — Federal Reporter. 
Fish. P. C. — Fisher's Circuit Court Patent Cases. 
Fish. P. R. — Fisher's Circuit Court Patent Reports. 
Blip. — Flipping's Circuit Court Reports. 
Gall. — Gallison's Circuit Court Reports. 
Gilp. — Gilpin's Circuit Court Reports. 
Grant— Grant's Cases, Penn. 
Gray — Gray's Mass. Reports. 

Har. 6° J. — Harris & Johnson's Maryland Reports. 
Holmes — Holmes' Circuit Court Reports. 
How. — Howard's Circuit Court Reports. 
Hughes — Hughes's Circuit Court Reports. 
Hun. — Hun's New York Supreme Court Reports. 
/*/. — Illinois Reports. 
2nd. — Indiana Reports. 
John. — Johnson's New York Reports. 
McA. —Mc Arthur's District of Columbia Reports. 

17 



XV111. ABBREVIATIONS. 

McC. — McCrary's Circuit Court Reports. 

McL. — McLean's Circuit Court Reports. 

Mason — Mason's Circuit Court Reports. 

Maule 6° S. — Maule & Selwyn's (English) Reports. 

Mete.— MetcalPs (Mass.) Reports. 

N. Y.— New York Reports. 

N. W. Rep.— North Western Reporter. 

0. G.— Official Gazette United States Patent Office. 

Op. — Opinions of Attorney General. 

Otto— Otto United States Supreme Court Reports. 

Paine — Paine's Circuit Court Reports. 

Penn. L. J. — Pennsylvania Law Journal. 

Pet. — Peters's United States Supreme Court Reports. 

Pet. C. C. — Peter's Circuit Court Reports 

Rawle — Rawle's Penn. Reports. 

Robb — Robbs's Circuit Court Reports. 

Sawy. — Sawyers's Circuit Court Reports, 

S. C. — South Carolina Reports. 

Story — Story's Circuit Court Reports. 

Thomp. 6° Cook — Thompson & Cook's N. Y. Supreme Court Reports. 

U. S. — United States Reports. 

Wall. — Wallace's United States Supreme Court Reports. 

Wall., Jr. — Wallace's Circuit Court Reports. 

Wash. — Washington's Circuit Court Reports. 

Webs. P. C— Webster's Patent Cases (English). 

Wend. — Wendell's New York Reports. 

West. L. y. — Western Law Journal. 

Wood — Wood's Circuit Court Reports. 

W« & 3 M. — Woodbury & Minot's Circuit Court Reports. 



INTRODUCTORY. 

Mechanical and business experience is acquired at the 
expense of time and money. For the want of money time 
must be employed in wage-earning for the necessaries of 
life. Inventors without means do not have this experi- 
ence, and inventors with means may be wanting " time," 
the other necessary factor to obtain this experience which 
must be obtained either from personal efforts or from the 
experiences of others before success can reasonably be 
expected. 

It is one of the purposes of this work to present a few 
important facts which the author has learned during his 
twenty-eight years as inventor, solicitor, manufacturer 
and operator, that inventors may profit by his experience 
and not be left to the slow and expensive process of per- 
sonal discovery — slow and expensive because of experi- 
ments which are uncertain in results, both mechanically 
and financially. Danger points are reached before danger 
has been suspected; papers are signed, mistakes are made 
and the fruits of invention lost to many inventors who 
from their inexperience lose by bad management, or are 
robbed of merited fortunes, when they resume their former 
vocations with the not very consoling thought, vehemently 
aired to friends, that " they never will be caught in 
such traps again." From that time many of them talk of 
inventions and patents like men of experience, and are in 
turn called " smart but unfortunate " by their neighbors, 
who yet recognize them as being local authority on 
patents and inventions. 

This recognition and prominence make these " unfor- 



6 INTRODUCTORY. 

tunate " inventors the accepted guides for the inventors 
of their respective localities, and their advice is followed, 
right or wrong, until other fatal blunders are made and 
the hopes of other inventors have mingled with their own 
in the depths of abject despair. True, they steered their 
friends clear of their own pit-falls, but they "steered" 
them into others with the same fatal results, and this they 
are likely to continue to do until the roads of these well- 
meaning advisers are strewn with many other abandoned 
wrecks and disappointed hopes. 

It is not my purpose to recite numerous instances of 
mistakes of this nature, nor the many common mistakes 
in developing, patenting, perfecting, manufacturing, and 
operating inventions, nor to act as solicitor of patents, 
nor as a patent lawyer, but to accompany inventors from 
the dawn of their inventions to introduction and maturity 
in the hope that they will avoid the numerous pit- falls 
before them detailed herein. 

Mistakes are just as common by persons other than in- 
ventors in their dealings and operations with patents and 
inventions. It is another purpose of this work to present 
facts and decisions which will enable persons to act in- 
telligently with reference to these important matters so 
little understood by the general public, and so expensive 
to learn from personal experiences. 

It is safe to assume that no business is so little under- 
stood by the people generally as that of patents and in- 
ventions, and that no business is transacted in which so 
little regard is had for the legal status of parties or for 
the intrinsic value of property: notwithstanding the fact 
that two-thirds of the material wealth of the United States 
is due directly and indirectly to these interests. 

As a rule a greater degree of caution will be exercised 
in the purchase of a blooded calf from a responsible 
neighbor than in the purchase of a patent-right from an 



RULES OF PRACTICE AND PATENT LAWS. 7 

entire stranger involving many times the amount of 
money. 

Publications giving full information with reference to 
the calf and its pedigree are attainable; but publications 
giving only partial information with reference to the 
patent and proceedings thereunder, are attainable, and 
these publications, like stories " to be continued," are 
bids for business only, and just enough is intended to be 
written to accomplish the purpose. The business too, is 
divided into several sub-divisions, and a person may be 
an expert in one and a novice in all of the others. One 
may be a good patent solicitor and know but compara- 
tively little of patent law and nothing of developing 
inventions or of reducing them to practice or of introduc- 
ing them to the public. Each branch is a business in 
itself and the whole must to a degree be understood by a 
person expecting success in the practical line of develop- 
ing, patenting, perfecting, manufacturing and operating 
inventions. 



RULES OF PRACTICE AND PATENT 
LAWS. 

The reader is referred to the Rules of Practice in the 
Patent Office, and to a pamphlet of Patent Laws and 
Laws relating to the registration of Trade Marks and 
Labels. A copy of each will be mailed free to any 
address on application by letter to the Commissioner of 
Patents, Washington, D. C. In every communication 
to the Commissioner give your post office address, naming 
county and state, and if a city give your street and 
number. I am writing on the assumption that you have 
these copies from which you will derive necessary and 
valuable information that would otherwise be copied 
herein. 



8 INTRINSIC VALUE OF INVENTIONS. 

INTRINSIC VALUE OF INVENTIONS. 

Having made an invention or discovery — which terms 
have practically the same meaning in patent practice — 
the first question to be considered by the inventor is, does 
the invention possess intrinsic value? That is, value as 
an improvement regardless of a patent. 

This problem is very difficult to solve and presents the 
following questions: 

i st. By the use of the invention will time or labor or 
both be saved; and to what extent ? 

2d. Are better results obtained, and to what degree? 

3d. What will be the cost compared with existing 
methods ? 

4th. Will a greater or less degree of skill be required 
to operate it? 

5th. Does it simplify or complicate? 

6th. Will it be more or less durable ? 

7 th. Will the average person familiar with the class to 
which the invention belongs readily comprehend it ? 

8th. What will be the probable demand,, cost and 
profit? 

These questions as a whole must be favorably answered 
before it will be advisable to proceed to procure a patent. 
See Patentable Inventions, page 18. 

An inventor is well qualified to answer questions 1. 2, 4 
and 5, viz.: as to the saving of time and labor; as to results; 
as to the degree of skill that will be required, and as to its 
simplicity; for the reason that his knowledge of existing 
devices and requirements caused him to make the inven- 
tion which is in the line of his experience derived either 
from actual practice or from close observation — the twin 
brother of practice. He has discovered the want and 
supplied it by his inventive skill and ingenuity, and as a 
"man is the best judge of his own health " so inventors 



INTRINSIC VALUE OF INVENTIONS. 9 

ought to be the best judges of the points raised under 
these four questions as the answers to them do not re- 
quire either mechanical or business experience. 

With reference to questions 3, 6, and 8, viz.: as to com- 
parative cost, as to durability, and as to the "probable 
demand," many inventors do not possess the mechanical 
skill, experience and general information necessary to 
arrive at proper conclusions, and will solicit the advice and 
opinions of different persons, which, as a rule, will be as 
conflicting as the evidence in the trial of a " horse " law- 
suit. 

Persons always willing to please will give favorable 
opinions; others of a " cranky " order will decide ad- 
versely on general principles, and still others will impress 
you with their profundity, and say just enough not to say 
anything which is really all they know about it, and as 
" since man to man is so unjust we scarcely know what 
man to trust," a few hints will be given to enable an in- 
ventor to decide these questions for himself. 

Consult persons believed to possess the necessary quali- 
fications and receive their reasons for their conclusions. 

A decision without the reasons therefor being given 
may be correct, but one may not understand from decis- 
ions alone. The question is one of cause and effect. The 
effect may be safe but cannot be fully understood until 
the cause is explained. If a decision be accepted with- 
out a statement of the reasons upon which it is based, 
action will be founded upon the judgment of another, 
but if the reasons are known action will be based upon 
the judgment of the person interested, which is much 
safer as a rule and more satisfactory. 

For example, — you may receive an adverse decision 
based upon the given reason that certain mechanical 
devices to be employed will not be durable. You may 
know of similar devices to produce different results re- 



IO DEVELOPMENT OF INVENTIONS. 

quiring greater service than will be required in your pro- 
duction, which have long been in successful operation. 
This fact will lead you to the conclusion that this decis- 
ion is. in fact favorable, for the reason being wrong it 
necessarily follows that the decision founded upon it is 
wrong also, and as no other reasons were given, you con- 
clude that no other objections could have been offered. 

You will find it advisable and oftentimes necessary to 
receive an explanation of a reason from which you will 
be able to determine the real value of the reason and 
thus have an infallible key to the decision. 

With reference to question 7, viz.: "Will the average 
person familiar with the class to which the invention be- 
Longs readily comprehend it?" the correct answer will be 
learned with some difficulty. 

You might exhibit your invention to twelve different 
men as you accidentally meet them and after hearing 
what each has to say, strike a general average by dividing 
the sum of their answers by twelve, and then reduce the 
quotient to correspond with your own ideas in the matter 
and call the question settled. 

When the invention is reduced to practice the '-'average 
man" may be able to operate it if a machine, and if it 
does not break will invariably endorse it, but he is likely 
to first learn from his more intelligent neighbors of its 
new and valuable features, when he will arrogate to him- 
self the credit of having selected it, though it was purely 
accidental — better not invest too much in the opinions of 
the "average" man. 



DEVELOPMENT OF INVENTIONS. 

Inventors as a class are very suspicious and oftentimes 
are indiscreet bv exercising too much care with reference 



DEVELOPMENT OF INVENTIONS. II 

to secrecy in not employing (when they do not possess) 
the proper mechanical skill to develop their inventions, 
that they may learn of their value. The development of 
an invention may disclose obstacles unforseen, which 
cannot be overcome or which are so serious as to cause 
an abandonment of the invention, — a very timely dis- 
covery — or the development may disclose so much value 
that haste is made in securing a patent which, were it not 
for the development, never would have been secured be- 
cause of doubts as to its comparative merits. It can be 
truthfully said, however, that this is infrequently the case 
as inventors too often mistake their zeal for their judg- 
ment, and see, what no one else can see, "millions in it," 
though usually too remote for immediate necessities. 

There have been some very prominent exceptions to 
this rule, however, to the discomfiture and chagrin of 
many "wise acres,'* who, at the expense of advertising 
themselves as having been stupid, will refer to inventions 
since proved so valuable and relate the circumstances of 
their development, and how cheaply they might have ac- 
quired certain interests in them. These very exceptional 
cases always become known as "nothing succeeds like 
success" and the thousands which constitute the rule are 
buried without ceremony within the narrow circles of 
their surroundings. 

The mechanic employed to develop your invention 
may in course of the employment, suggest changes 
and improvements which may be incorporated in the 
device or machine, and then claim to be a joint inventor 
with yourself and one-half owner of the whole. You may 
concede his claim and unite with him in an application 
for a patent; and discover after the patent is issued that 
you are not joint inventors and that the patent is invalid. 

This has often been done and many fortunes have been 
lost thereby. I personally know of one instance of the 



12 SCIENTIFIC AID. 

kind which resulted in a loss of several million dollars to 
the real inventor, who is now living, and though in com- 
fortable circumstances, is a disappointed man to say the 
least. 

With reference to this very important matter your at- 
tention is called to 

SCIENTIFIC AID. 
Taney, J.: 

"Neither can the inquiries he made, or the information or advice 
he received from men of science, in the course of his researches, im- 
pair his right to the character of an inventor. No invention can 
possibly be made, consisting of a combination of different elements of 
power, without a thorough knowledge of the properties of each of 
them, and of the mode in which they operate on each other; and it 
can make no difference in this respect, whether he derives his infor- 
mation from books or from conversation with men skilled in the 
science. If it were otherwise, no patent in which a combination of dif- 
ferent elements is used, could ever be obtained; for no man ever made 
such an invention without having first obtained this information, un- 
less it was discovered by some fortunate accident. And it is evident 
that such an invention as the Electro-Magnetic telegraph could never 
have been brought into action without it ; for a very high degree of 
scientific knowledge and the nicest skill in the mechanic arts are 
combined in it and were both necessary to bring it into successful 
operation. And the fact that Morse sought and obtained the necessary 
information and counsel from the best sources and acted upon it, 
neither impairs his rights as an inventor nor detracts from his merits. " 
O'Reilly v. Morse, 15 How., ill. 

To invalidate a patent on the ground that it was not the patentees 
idea, it must appear that the suggestions, if any, made to him would 
furnish all the information necessary to enable him to construct the 
invention. Pitts v. Hall, 2 Blatch., 229; Ibid., 1 Fish., 446. 

See Joint Inventors, page 27; Employer and Employe, page 1 14. 

You may hesitate in the employment of mechanical 
skill for the development of your invention for fear that 
the exposure will afford an opportunity for the appropri- 
ation of your invention by another, as has often been 
the case. 



CAVEATS. 

As a precautionary measure it is advisable to make a 
drawing or sketch of your invention and attach to, or 
write upon it which is preferable, a description of it, and 
a certificate to be signed by the workman, or by any per- 
son examining it, properly dated, certifying that: "The 
invention described and represented herein was exhibited 

to me this day by , who claims to be the sole 

and original inventor thereof, and that the same or any 
invention substantially the same has been heretofore un- 
known to me." 

The subscriber or subscribers will be thus barred from 
maintaining any claim to the invention. True they may 
describe it to others who may undertake to appropriate 
it, but such undertaking will be attended with very little 
if any hope of success, and the chances of detection are 
too great to warrant the risk. 



CAVEATS. 



To further guard against the danger of exposing your 
invention you might file a Caveat in the Patent Office — 
see its Rules of Practice, page 7, but it may be a ques- 
tion whether in doing this you do not increase the dan- 
ger of its being appropriated by persons who "are ex- 
perts in obtaining information." When such information 
is fraudulently obtained the invention may be modified to 
deceive, although substantially the same, and an applica- 
tion for a patent thereon filed in the Patent Office by 
some convenient friend, of which filing you will under 
said rules be notified by the Patent Office, when you must 
within three months file an application for a patent on 
your invention and meet the fraudulent application pre- 



14 CAVEATS. 

viously filed in "Interference," which is said to be the 
"Patent Pirate's Retreat." 

Note. — * 'An Interference is a proceeding instituted for the pur- 
pose of determining the question of priority of invention between two 
or more parties claiming substantially the same patentable invention." 
For further particulars see Rules of Practice, pige — ; Priority of In- 
vention, page — ; Equivalents, page — . 

It is generally supposed that the secret or confidential 
Archives of the Patent Office are what the term implies, 
viz.: secret in fact, and I do not say to the contrary; but 
unfortunately it is true that inventors of prominence per- 
sistently claim that access to these secret Archives has 
been had by persons other than the proper custodians. 
In Telephone matters this claim is of common notoriety. 
It is "human to err," and humanity must be depended 
upon to guard the secret Archives of the Patent Office 
where, by law, Caveats must be filed, and humanity must 
be depended upon in your solicitor to resist alluring' 
temptations to give information with reference to the 
subject matter of your Caveat within his knowledge, and 
which can be easily reproduced from copies in his pos- 
session. 

I wish to emphasize the fact that my suspicions with 
reference to the competency, honesty and skill of patent 
solicitors are supported by the Rules of Practice in the 
Patent Office — see pagi 3 of Revised Issue of July 13, 
1886, from which I copy as follows: 

"As the value of patents depends largely upon the careful prepara- 
tions of the specifications and claims, the assistance of competent 
counsel will, in most cases, be of advantage to the applicant; but the 
value of their services will be proportionate to their skill and honesty, 
and too much care cannot be exercised in their selection. The office 
cannot assume responsibility for the acts of attorneys, nor can it 
assist applicants in making selections." 

"Intelligence and good moral character" are the only 



CAVEATS. 15 

qualifications required to practice in the Patent Office. 
These qualifications admit of so many different construc- 
tions as to be of little value, and when considered in 
connection with the inducements to dishonesty with the 
favorable opportunities and with the uncertainty of de- 
tection, it must be presumed by men of affairs that the 
vocation will be a haven of refuge for incompetency, dis- 
honesty and fraud, at the expense of the innocent in- 
ventors of the country, and at the expense of the good 
name of the legitimate and honorable profession. 

Note. — As a matter of justice I wish to state that my personal ex- 
periences with patent solicitors and patent lawyers have been fortu- 
nate indeed, and I shall always feel under obligations to them and 
each of them for their fidelity, skill and efforts in my interests. 

No general rule can safely be laid down as to when a 
Caveat should be filed, but each case must be decided from 
all of the circumstances surrounding it. In arriving at a 
determination when prompt action is necessary it will be 
well to consider the advisability of making an immediate 
application for a patent. 

This course of action, however, will very seldom be 
necessary for, as a rule, the fears prompting it will be 
founded on a too vivid imagination; but should you 
make an immediate application for a patent you will be 
unable for want of time to make the researches and ex- 
aminations herein recommended, pages 30, 32. Therefore 
it will be advisable for you to make the fullest specifica- 
tions and broadest claims possible within your knowledge 
of the state of the art, which specifications and claims 
may be modified according to the references that you 
may receive from the Patent Office. See Procuring Pat- 
ents, page 30; Priority of Invention, page 28; Abandon- 
ment, page 24; Public Use, page 25; Specifications and 
Claims, page 35; Patentable Inventions, page 18; Form, 
Size, Proportion, page 21, and 



1 6 STATE OF THE ART. 



STATE OF THE ART. 



Assuming that you have decided that "your invention 
possesses intrinsic value, that is, value as an improve- 
ment regardless of a patent/' as stated, we will now con- 
sider the state of the art; or what is new and what is old 
in your invention. 

The general practice is to employ a solicitor of pat- 
ents to make a "preliminary examination in the Patent 
Office" and report to the inventor upon the "patent- 
ability of an invention." for which a solicitor's fee of five 
dollars is usually charged. 

It will be a poor solicitor indeed who cannot discover 
some sort of a claim upon which to base a patent, no 
matter how many similar devices may be found in the 
Patent Office. His report, therefore, is quite certain to 
be favorable as to its "'patentability," which is strictly 
correct and may be made with reasonable safety on gen- 
eral principles without any examination, when the fee of 
five dollars is all profit, and the inventor, though pleased, 
is "none the wiser." 

These facts may enable you to understand why it is 
that a patent solicitor can safely advertise "No patent, 
no pay," or "Fees contingent upon securing a patent," 
and you may be able to determine before we conclude 
the safe course to pursue. 

It is fair to presume that the solicitor by making a 
favorable report anticipates the further business of pro- 
curing a patent, which his letter accompanying the re- 
port will likely disclose and which also may very prop- 
erly be inferred from the advertisements of some solicit- 
ors to "Advise as to patentability free of charge," which, 
as we have seen, may not require much labor nor talent, 
and but little is lost if no patent is applied for. 



STATE OF THE ART. I 7 

An application usually follows the favorable report, and 
the solicitor, as he expects, secures the business, with his 
fees amounting to twenty dollars or more, and the more the 
better, usually obtained by a plea of "unexpected compli- 
cations and extra services." To these fees, whatever they 
may be, is usually added five dollars for drawings which 
should be prepared with great care, but which are often 
"jobbed out" at incredibly low prices, say a dollar or a 
dollar and a half, the solicitor pocketing the surplus. 

These fees and perquisites, of course, would be cut off 
by an unfavorable report, which an inventor with these 
facts before him will hardly expect and quite likely has 
never received. The unfavorable "business" comes later 
on, after fees have been paid and very likely with bor- 
rowed money long since due, and borrowed too upon the 
prestige of the "favorable" report on the "patentability of 
the invention"; not with reference to the state of the art 
nor with reference to the probable value and validity of 
the patent when secured; neither with reference to the 
machine or device manufactured under the patent in- 
fringing existing patents, but with reference solely to the 
"patentability" of the invention. 

The inventor asks for nothing more than this, and he 
receives all he asks for. After receiving a "favorable" 
report he procures his patent and proceeds to business, 
when, if his invention is brought prominently into use he 
need not be surprised to receive notices of infringements 
and to learn that his patent is practically worthless; but 
if his invention "sleeps," as a large majority of inventions 
do, the worthlessness of the patent may never be discov- 
ered. Keep in mind the fact that 

"An invention may be patentable and be a direct infringement of 
a previous patent." Cleveland v. Towle, 3 Fish., 525; Spaulding v. 
Tucker, Deady, 649; Fales v. Wentworth, 1 Holmes, 96. 



1 8 PATENTABLE INVENTIONS. 

Many inventors believe that their interests will be pro- 
tected by the Patent Office, but such is not the case, as 
"the Patent Office is responsible to nobody," and can 
decide only on the matters presented like a court of 
justice that has nothing to do with the drawing of an in- 
dictment, but must decide as to its sufficiency. It is the 
same with the Patent Office in reference to the specifica- 
tions and claims in the application for a patent which, 
like an indictment, may be so loosely and improperly 
drawn as to be worthless; but unlike an indictment the 
specifications and claims may be amended by the solici- 
tor so as to just "pull through," and they may be and 
very frequently are repeatedly amended until finally al- 
lowed, when the "patentability of the invention" of 
course is officially established. 

After the patent is issued it cannot be changed except 
to correct mistakes "through the fault of the Patent 
Office," and it must be judged as it is and not as it might 
have been. True, the patent may be re-issued for other 
reasons, which repeats the time and expense, and is not 
a very consoling remedy. See Re-issue, page 46; Dis- 
claimer, page 49. 



PATENTABLE INVENTIONS. 

Before filing a Caveat, or before proceeding to make a 
preliminary examination in the Patent Office to learn of 
the state of the art, or before making an application for 
a patent, and in fact before much if any progress is made 
in the development of your invention you should posi- 
tively know that your invention is patentable within the 
United States Patent Laws and the decisions thereunder, 
and you should also know in case your invention is pat- 
entable, whether you have lost any rights by reason of 



PATENTABLE INVENTIONS. 1 9 

its public use, its abandonment, and dedication to the 
public. 

You should also know what inventions may be joined 
in one patent and of the legal effect of patenting a joint 
invention by a sole inventor and vice versa. 

The answers to the first six of the series of questions on 
page 8, will enter largely into the consideration of Patent- 
ability. If, by the use of an invention a saving of time or 
labor is obtained; rapidity of operation is accomplished 
either by the application of an improved motor or by a 
complete or partial reconstruction of the machine. If the 
former is the case its Patentability depends upon the nov- 
elty and extent of the changes wrought in the machine to 
adapt it to such motive power; if the latter, such recon- 
struction in whole or in part indicates that it is patentable. 
If the machine accomplishes better results it may be due 
to better workmanship and better materials in the con- 
struction of the machine, or the manipulations of a more 
expert operator, or to the reconstruction of the machine 
in whole or in part by new and improved devices. The 
latter instance only is evidence of its patentability. When 
less skill is required to operate a machine, it is evidence 
that it is simpler, and if simpler, and both new and useful, 
its patentability cannot be questioned. Mechanical skill 
is distinguished by the courts from inventive skill, and a 
fine discrimination is therefore required in considering 
"patentability." 

With reference to the question raised under this head- 
ing, "Patentable Inventions, " I call your attention to the 
following Statute, Rules and Decisions. 

"Any person who has invented or discovered any new and useful 
art, machine, manufacture or composition of matter, or any new and 
useful improvement thereof not known or used by others in this 
country, and not patented or described in any printed publication in 
this or any foreign country before his invention or discovery thereof, 
and not in public use or on sale for more than two years prior to his 



20 PATENTABLE INVENTIONS. 

application, unless the same is proved to have been abandoned, may, 

* * # * obtain a patent therefor." Rev. Stat., Sec. 4886. 

The courts require in accordance with the requisites of the statutes 
that an applicant for a patent must himself make the invention, that 
it required inventive skill as distinguished from mere skilled work- 
manship, that it was new and useful. Thompson v. Boisselier, 114 
U. S., 1; Woodman v. Stimson, 3 Fish., 98. The act of 1836 seems 
to require only novelty and utility in an invention, upon which to 
base a patent. McCormick v. Seymour, 2 Blatch., 240. 

An invention may be 

"A simple but happy conception, which, when reduced to practice, 
produces surprising results, both in the quality of the article manu- 
factured and the rapidity with which it was turned out. A subject 
matter to be patentable must require invention, but it is not, neces- 
sarily, the result of long and painful study, or embodied alone in 
complex mechanism. A single flash of thought may reveal to the 
mind of the inventor the new idea, and a frail and simple contrivance 
may embody it. Some inventions are the result of long and weary 
years of study and labor, pursued in the face of abortive experiments 
and baffled attempts, and finally reached after the severest struggles, 
while others are the fruit of a single, happy thought/' Magic Ruffle 
Co. v. Douglas, 2 Fish., P. C, 330. 

There cannot be more than one valid patent for an invention. 

* * * * Separate patents for separate and distinct parts of the 
same invention are nevertheless valid. Jones v. Sewall, 3 Cliff., 563. 

Separate patents for the machine and the process and the product 
are allowable. McKay v. Dibert, 5 Fed. Rep., 587; Kelleher v. 
Darling, 14 O. G., 673. 

A law of nature, i. e., a scientific fact or principle is not patentable. 
Walker on Pat., p. 7; In re, Kemper, 1 Mac A., 1. 

A result is not patentable. Fuller v. Yentzer, 4 Otto, 288. 

"Invention," (or that which is patentable,) in the sense of the pat- 
ent law, is the finding out, contriving, devising or creating something 
new or useful, which did not exist before, by an operation of the in- 
tellect. Ransom v. Mayor of New York, P. C, 1 Fish., 252. 

The application of an old process or thing to a new subject, with- 
out any exercise of the inventive faculty, is not patentable. Hotch- 
kiss v. Greenwood, 11 How., 248. 

Mere change in the form of machinery (unless a particular form is 
specified as the means by which the effect described is produced), or 
an alteration in some of its unessential parts, or in the use of known 



FORM, SIZE, PROPORTION. 21 

equivalent powers, not varying essentially the machine, or its mode 
of operation or organization, will not make the new machine a new 
invention. O'Reilly v. Morse, 15 How., 62. 

A change only in form, proportions or degree, the substitution of 
equivalents doing substantially the same thing in the same way, by 
substantially the same means, with better result, is not such an inven- 
tion as will sustain a patent. Smith v. Nichols, 21 Wall, 112. 

The selection of a superior material cannot, of itself, be the sub- 
ject of a patent. In re, Maynard, I MacA., 536. 

Alterations of a combination as is the necessary consequence of 
the practical use of the machine by a man of ordinary skill and judg- 
ment are not patentable. Wilbur v. Beecher, 2 Blatch., 132. 

See Form, Size, Proportion, page 21; Abandonment, page 24; 
Public Use, page 25; Procuring Patents, page 30; Specifications and 
Claims, page 35. 



FORM, SIZE, PROPORTION. 

A patent cannot be granted merely for a change of form. The Act 
of Feb. 11, 1793, Sec. 2 (1 Statutes at Large, 321) so declared in express 
terms, and though this declaratory law was not re-enacted in the Patent 
Act of 1836 (5 Statutes at Large, 117), it is a principle which neces- 
sarily makes part of every system of law granting patents for new 
inventions. Merely to change the form of a machine is the work of 
a constructor not of an inventor; such a change cannot be deemed an 
invention. * * * To change the form of an existing machine, and 
by means of such change to introduce and employ other mechanical 
principles or natural powers, or, as it is termed, a new mode of opera- 
tion, and thus attain a new and useful result, is the subject of a patent. 
Winans v. Denmead, 15 How., 330. 

A change of form will not do, inasmuch as a different form might 
answer all the purposes of the first invention. There are instruments 
invented in which the particular form is a material part of the dis- 
covery, and then a departure from the form would be a substantial 
departure, because the form is essential to the invention. But there 
are many manufactures where the particular form of the thing is not 
essential to its utility, and there may be a departure from that form 
and still a valuable instrument be constructed. The curved form is 
given to the plates to allow for the expansion and contraction of the 
plates in casting a chilled rim, but for the purpose of making allowance 
for contraction any other form involving the principle of that allowance 



22 FORM, SIZE, PROPORTION. 

may be used, and there would obviously be no substantial change in 
the thing manufactured, because a particular form given by the first 
inventor is not essential to the production of the instrument. If the 
form is a part of the thing patented, and is essential to its value, then 
a change from the form is a substantial change, and may be the means 
of producing a new manufacture. Take the Blanchard machine as an 
illustration: It is one of the most ingenious machines of the day, and 
is constructed to turn irregular forms after a pattern, such as gun 
stocks, lasts, and spokes for carriage wheels. Blanchard, in his 
machine, cuts the block, whether for a last or a gun stock, or a spoke 
shave, after a pattern, by means of rotating cutters. A modification 
of this machine was made, and set up as a new machine, and 
claimed not to be an infringement. Instead of rotating the cutters 
the cutters were made stationary, and the block rotated. It was 
claimed that this was an entirely different principle from Blanchard' s, 
and that the party making the change had not violated the patent. 
Now, any person of common understanding would see that the thing 
could be done in that way; it was a mere difference in the mechanical 
contrivance and a change of form, in which there was no skill, and no 
ingenuity. This illustrates the difference between a change of form 
and a substantial change involving mind, ingenuity and invention. 
Many v. Jagger, I Blatch., 372. 

It is not every change of form and principle which is declared (by 
the statute) to be no discovery, but that which has simply a change of 
form or proportion, and nothing more. If, by changing the form and 
proportion a new effect is produced, there is not simply a change of 
form and proportion, but a change of principle also. In every case, 
therefore, the question must be submitted to the jury whether the 
change of form and proportion has produced a different effect. Davis 
v. Palmer, 2 Brock., 198. 

We take the rule to be, and so it has been settled in this and in 
other courts, that, if the two machines be substantially the same, and 
operate in the same manner, to produce the same result, — though 
they may differ in form, proportions and utility, they are the same in 
principle. Evans v. Eaton, 3 Wash., 443. 

A distinction must be observed between a new article of commerce 
and a new article which, as such, is patentable. * * * * To 
render the article new in the sense of the Patent Law, it must be 
more or less efficacious, or possess new properties by a combination 
with other ingredients; not from a mere change of form produced by 
a mechanical division. Glue Co. v. Upton, 7 Otto, 3. 



UTILITY. 23 

DOUBLE USE. 

It requires no commentary to establish that the application for an 
old thing to a new use, without any other invention, is not a patentable 
contrivance. A man who should use a common coffee mill for the first 
time to grind peas could hardly maintain a patent for it. A man who 
should for the first time card wool on a common cotton- carding 
machine, would find it difficult to establish an exclusive right to the 
use of it for such a purpose. Woodman v. Stimpson, 3 Fish., P. C, 104; 
McComb v. Brodie, 2 O. G., 119. 



NOVELTY. 



To be new, in the sense of the act, it must be the product of origi- 
nal thought or inventive skill, and not a mere form of mechanical 
change of what was old and well known. The Stanley Works v. 
Sargent & Company, 8 Blatch., 344. 

Whenever a change or device is new, and accomplishes beneficial 
results, courts look with favor upon it. The law in such cases has no 
nice standard by which to gauge the degree of mental power or inven- 
tive genius brought into play in originating the new device. The 
Middleton Coal Co. v. Judd., 3 Fish., P. C, 141. 

As a patent is prima facie evidence of novelty the want of novelty 
must be proved by the defendant. Howes v. Nute, 4 Cliff., 173. 

Validity of a patent is not determinable by the degree of novelty 
of invention displayed, but it is sufficient if there exists some novelty 
and merit, however slight. Miller & Peters Manufacturing Co. v. 
Du Brul, 12 O. G., 351. 



UTILITY. 



"Useful," means, not frivolous or injurious to the well-being, 
good policy or sound morals of society. Lowell v. Lewis, 1 Mason, 
182. 

If inventions are not entirely useless, the requirements of the law 
in this particular (utility) are complied with. Stanley v, Hewitt, 17 
Frank. Jr. (2d series), 165; Conoverz/. Roach, 4 Fish., P. C, 12; Gibbs 
v. Hoefner, 19 Fed. Rep., 323. 

The patent itself affords prima facie evidence of utility. Vance v. 
Campbell, 1 Fish., P. C, 483; Wayne v. Holmes, 1 Bond, 27. 



24 ABANDONMENT. 

General and extensive use of an invention is evidence of its utility. 
Adams v. Edwards. I Fish.. P. C., I. 

When the defendant has used the invention he is estopped from 
denying its utility. Ibid. (Fish), Hays z\ Sulsor, i Bond. 279. 

Price paid ior the use of a thing is some evidence of utility. Hays 
: . Sulsor. I Bond, 279. 

Burden of proof is on the defendant to show that a patented inven- 
tion wants utility. Fifleld v. Whittemore. 17 Fed. Rep.. 513. 



ABANDONMENT. 



Abandonment is the surrendering of an invention to the public. : y 
reason of the failure of an inventor to make application within a 
reasonable time after he has made known, by publication or written 
description, or has publicly used his invention, or by his failure to 
prosecute a pending application for a patent. Abandonment is 
affected by the intent of an inventor. The law does not presume that 
an inventor assented to the use of his invention by others. McMillen 
z\ Barclay. 5 Fish., P. C. 1S9. There must be evidence of a distinct 
character showing such intent. Hovey z\ Henry. 3 West, L. T.. 153. 
Intention of abandonment need not necessarily be expressed in words. 
Kendall r. Winsor, 21 How., 322; Planing Machine Co. v. Keith, 11 
Otto., 479: Shaw v. Cooper, 7 Pet., 292. Circumstances may 
which will excuse delay in prosecuting an application for a patent. 
such as extreme poverty or protracted sickness. Ibid. (Planing 
Machine Co. z\ Keith.) 

If the originator of an imperfect device makes no effort for years 
to perfect it and in the meantime others mature it independently of 
him and obtained patents for it, he loses all right to a patent. Gray 
v. Hale, Com. Dec, 1 1S71 . 129. 

The doctrine of the law is, that if an invention was used by others 
or even by one person, with the consent or the allowance of the inven- 
tor, publicly, and for more than two years before the application for a 
patent; or if it was used for a long period by the inventor himself, 
not in the way of experiment, but for gain, in either case the patent 
is void. Bell v. Daniels, 1 Bond, 212. 

The mere forbearance to apply for a patent during the progress of 
experiments, and until the party has perfected his invention and 
tested its value by actual practice, affords no just grounds for pre- 
suming an abandonment. It is true an express relinquishment of an 



PUBLIC USE. 25 

invention to the public is not indispensable to an abandonment, 
which may be inferred from long delays unexplained, or from acts of 
the inventor inconsistent with any other theory, but it cannot be pre- 
sumed from mere delay to apply for a patent when the inventor is all 
the while perfecting the invention and testing its merits. The Loco- 
motive Engine Safety-Truck Co. v. The Penn. R. Co., 6 O. G., 927. 

Sales in the usual course of business, whether absolute or con- 
ditional, if they are sales of the patented thing, work a forfeiture. A 
single sale has that effect, as well as a hundred sales. Henry v, 
Francetown Soap-Stone Co., 2 Fed. Rep., 78. 

Where a patented machine was improved, and the inventor of the 
improvement could not use his improvement without infringing the 
original patent, and was unsuccessful in his efforts to get the owners 
thereof to adopt his improvement, or in inducing others to operate it, 
and the inventor was unable for want of means to operate his inven- 
tion or to apply for a patent thereon until another person had made 
and patented his improvement, it was decided that he had not lost 
his right in his invention. Webster v. New Brunswick Carpet Co., 
5 O. G., 522. 

If the public use of an invention prior to the application for a pat- 
ent thereon is acquiesced in by the inventor, it is an abandonment of 
his invention. His acquiescence can in no case be presumed, where 
he has no knowledge of such use. But this knowledge may be pre- 
sumed from the circumstances of the case, Shaw v. Cooper, 7 Pet., 
292. 

To defeat a patent by a dedication to the public, the public use 
must be of a perfected machine and not of a machine for experiment 
only. Winans v. New York & Harlem R. R., 4 Fish., P. C, 1. 

See Priority of Inventions, page 28; Defeating Patents, page 43, 
and 

PUBLIC USE. 

The U. S. Statute of 1870 requires that an invention to be patent- 
able must not have been "in public use or on sale for more than two 
years piior to his (the inventor's) application for a patent therefor," 

Public use means the use in public with the consent of the inven- 
tor. Rich v. Lippincott, 2 Fish., P. C, 1. And a single use by any 
person other than the inventor, or by the inventor in an open way if 
the use was not experimental, is a public use within the patent law. 
Jones v. Barker, 11 Fed. Rep., 597. 

After the filing of an original application for a patent if such appli- 
cation has not been abandoned and two petitions therein relate to the 



20 PUBLIC USE. 

"same transaction/ 1 the public use to invalidate the patent must be 

use prior to the original and continuing application. Weston z\ 
White. 13 Elatcii., 447, 

If an inventor sells a machine of which his invention forms a part 
and allows it to be used without restriction of any kind the use is a 
public one. So, on the other hand, a use necessarily open to public 
view, if made in good faith solely to test the qualities of the invention 
and for the purpose of experiment, is not a public use with::: the 
meaning of the statute. Egbert v. Lippmann, 140:::. 333; E 
beth v. Pavement Co., 97 U. S., 126. 

If before an application for a patent an invention should be 
used surreptitiously in fraud of the inventor, or used without the con- 
sent of the inventor, neither such knowledge nor such use will 
invalidate the patent. Pennock v. Dialogue, 2 Pet.. 1. 

If an inventor suffers his invention to go into public use and does 
not immediately assert his right he is not entitled to a patent; nor 
will a patent which has been obtained under such circumst:,::: e 5 a 
whatever may have been the intention of the inventor, protect his 
right Shaw v. Cooper, 7 Pet.. 292. 

I: it were accessary, as well it might be, for the invent:: :: em- 
ploy others to assist him in the original structure or use by himself, 
or if before his application his invention should be pirated by another 
or used without his ; : :sent, it cannot be supposed that such would 
invalidate the patent. Pennock v. Dialogue, 2 Pet.. iS. 

The patentee may make experiments with his invention or disclose 
it to those he may wish to consult or employ others to assist him in 
making and using his machine, and in preparations for procuring a 
patent, without imp airing his patent Whitney z\ Emmett, 1 Bald- 
win. 3C9. 

There is no presumption of law that a patentee consents to the use 
:: his invention by others from the fact that he (the patentee) use . it 
publicly before applying for a patent. McMiUin v. Barclay, 5 Fish., 
P. C, 189. 

The public use must be in order to invalidate a patent), of a 
machine sc far perfected as to be practical in its :;:eration so far as it 
rovers the new devices. American Hide & Leather Splitting C: : 
Tool & Machine Co., 1 Holmes, 503. 

A mere occasional use by the inventor, in trying experiments, or a 
temporary use by a few neighbors with his consent, as an act of per- 
s : oal accommodation or kindness, for a short and limited period. 
not destroy his right to a patent. Wyetfa : , Stone, 1 Story. 273. 



JOINT INVENTORS. 27 

The evidence should be quite clear that the use was not by the 
way of experiment, or for the purpose of perfecting the machine, in 
order to justify the conclusion that the patentee had forfeited his 
right to the improvement. Pitts v. Hall, I Fish., P. R., 441. 

The plaintiff, therefore, in this case, had a right to use his cars on the 
Baltimore and Ohio Railroad, by way of trial and experiment and to 
enter into stipulations with the directors of the road for this purpose 
without any forfeiture of his rights. * * * It is the use of the im- 
provement after it had been completed and reduced to practical 
success, which operates as a forfeiture — as a dedication to the public 
— as a giving it up to the public. Winans v. New York & Harlem 
Railroad, 4 Fish., P. C, I. 

To support a defense of prior public use it must be shown that the 
use was by some person who perceived the fact of the utility of the 
machine or process and who understood the results accomplished and 
it must also be shown that the person so seeing and understanding 
communicated to the public the information. Boyd v. Cherry, 4 
McC, 70. 

A court must be convinced beyond a reasonable doubt by evidence 
before it will invalidate a patent because of prior use. Everest v. 
Buffalo Lubricating Oil Co., 20 Fed. Rep., 848. 

An inventor cannot relieve himself of the consequences of the prior 
public use by assigning an interest in his patent or invention to the 
party who used it. Worley v. Loker Tobacco Co., 14 Otto, 340. 

See Abandonment, page 24; Defeating Patents, page 43. 



JOINT INVENTORS. 



Where one person suggests one thing and the other another, and 
by their joint labors a perfect machine is made, a joint patent may 
properly issue to them. Worden v. Fish., n Fed. Rep., 505. If 
one person invents a distinct part of a machine and another person 
invents another distinct part of the same machine, such parties are 
not joint inventors, but should each obtain a patent for his own in- 
vention. Ibid., 27. 

A joint inventor cannot take a patent in his own name. By the 
sixth section of the Act of 1836, the applicant must be the inventor. 
One of several joint inventors cannot, with propriety, be called the 
inventor; and if he applies for a patent, the Commissioner is bound 
to refuse it, although that is not expressly named in the seventh sec- 



:28 PRIORITY OF INVENTION. 

tion as one of the grounds upon which he is authorized to refuse a 
patent. Arnold v, Bishop, I McA., 36. 

A person reducing to practice the theory of another, who assists in 
its reduction to practice, cannot be considered as the sole inventor of 
the machine, as the invention consists both of the discovery of the 
principle and the reduction of it to practice; in such case neither 
party can be considered as being the sole inventor. Ibid. 

A patent to two as joint inventors, which is the sole invention of 
one alone is void. Ransom v. Mayor of New York, 1 Fish., P. C, 252. 
But a new application may be seasonably filed for a patent on the 
same invention by the sole inventor. But the latter patent will not 
retroact by way of confirmation of the patent originally issued. 
Deven's Opinion, 16 Op., 117. 

A joint patent cannot be sustained upon a sole invention of either 
of the patentees. If each of the patentees obtain separate patents for 
the same invention, and afterwards both obtain a joint patent for the 
same rs their joint invention, they are estopped by the joint pattern 
in asserting any title under any of the several patents. Barrett v. 
Hall, I Mason, 447, 

When the patent is joint it is prima facie evidence of joint inven- 
tion; but if all the patentees did not join in the invention it is void. 
Hotchkiss v. Greenwood, 4 McL., 456; Walker on Patents, sections 

50, 51. 

There is no statutory authority to grant a patent to a non-inventor 
jointly with an inventor, without an assignment or a death, any more 
than there is to grant a patent to a non-inventor alone. Ibid. (Walker), 
Sec. 51. 

An inventor may adopt minor improvements which are suggested 
by another, and the person making the suggestion does not thereby 
become a joint inventor. Yost v. Heston Com., Dec. (1S71), 226. 
These suggestions, to amount to an invention, must furnish all of the 
information necessary to complete the machine. Pitts v. Hall, 2 
.Blatch., 230. See Scientific Aid, page 12. 



PRIORITY OF INVENTION. 

You will find it impossible to guard against claims 
made to prior inventions like your own, in advance; 
hence you will necessarily incur a risk with reference to 



PRIORITY OF INVENTIONS. 2^ 

them. This question is the most frequently raised in 
Interference Cases, page 14. To defeat your claim for 
a patent it seems that it is not necessary for it to be 
shown that a prior invention like your own had been re- 
duced to practice as will be the case in defeating your 
patent when obtained. See Defeating Patents, page 43. 
Neither is it necessary to show that the invention had 
been in public use, or had been reduced to practical oper- 
ation; but it seems it must be shown that it was an inven- 
tion prior to yours as to date, and that the inventor had 
exercised reasonable and continuous diligence in reduc- 
ing it to practice. 

In a race of diligence between two independent inventors, he who 
first reduced his invention to a fixed, positive and practical form 
would seem to be entitled to , priority of right to a patent therefor. 
The clause * * * * now under consideration seems to qualify that 
right, by providing that, in such cases, he who invents first shall have 
the prior right, if he is using reasonable diligence in adapting and 
perfecting the same, although the second inventor, has in fact, first 
perfected the same, and reduced the same to practice in a positive 
form. Woodcock v. Parker, 1 Gal., 437; 1st Story, 590. 

The date of the invention is the date of the discovery involved, 
and the attempt to embody that in some machine; not the date of 
perfecting the instrument, * * * * if the invention was made — 
if it was set forth in a machine which would and did discharge a fire, 
— that is all which is necessary to constitute the invention. Colt v. 
Massachusetts Arms Company, 1 Fish., P. C, 108. 

If, gentlemen (Judge Sprague to the jury), the invention was per- 
fected—if Mr. Johnson used reasonable diligence to perfect it, then 
he had a right to have it incorporated into his patent, and to super- 
sede those who had intervened between his first invention or dis- 
covery and his subsequent taking out of his patent. If he had not 
perfected it, and did not use due diligence to carry it into effect, and 
in the meantime, before he got his patent, somebody else had in- 
vented and used, and incorporated into a useful, practical machine, 
that mode of feeding, then he could not by subsequent patent ap- 
propriate to himself what was embraced in the former machine. 
Johnson v. Root, 1 Fish., P. C, 351. 

There can be no comparison of the diligence of the two inventors 



30 PROCURING PATENTS. 

to determine the fact of diligence, and it is of no consequence that 
the second inventor was exceedingly diligent and made more rapid 
progress, if the first inventor was reasonably diligent in perfecting 
the invention. Electric R. R. Signal Co. v. Hall R. R. Signal Co., 6 
Fed. Rep., 603. 

The question is not whether one party obtained better results than 
the other, in an issue of priority of invention, but the question is 
which of the parties first made the subject matter in controversy. 
Matthews v. Wade, 1 Mac A., 143. 

See Defeating Patents, page 43. 



PROCURING PATENTS. 

Employ a solicitor of patents to make a preliminary 
examination in the Patent Office, not with reference to 
the "patentability of your invention," but for the purpose 
of forwarding you the dates and numbers of all patents 
for inventions similar to your own. At the time of the 
employment you should furnish your solicitor with a 
drawing or sketch of your invention in addition to a full 
and clear written description of its construction and 
operation. Specifically point out its advantages and 
wherein it differs from similar devices and machines in 
use. If you have not access to Patent Office Reports, 
nor to publications containing the claims and drawings 
of the patents of which you received the dates and num- 
bers from your solicitor, write direct to the Commissioner 
of Patents for official copies of them (giving their dates 
and numbers), to be mailed to your address. Upon the 
receipt of these copies and their examination by your- 
self, select one, two or more of them, as your judgment 
may dictate, which appear to be the most similar to your 
invention, and write again to the Commissioner of Pat- 
ents for copies of all of the rejected claims and references 
appearing in the files of these cases in the Patent Office 
previous to the granting of these patents, which you 



PROCURING PATENTS. 3 I 

must designate by dates and numbers in your letter to 
the Commissioner. 

You will likely find many rejected claims and refer- 
ences in this manner, and if you find references to pat- 
ents from which you have not received dates and num- 
bers from your solicitor, and you have not access to 
Patent Office Reports, nor to publications containing 
copies of these patents, write to the Commissioner of 
Patents for official copies of them also, to be sent to 
your address. You may thus find that these patents 
have been overlooked by your solicitor, however honest 
he may have been. This mode of procedure may lead 
you to discover that the state of the art is more advanced 
than you had anticipated and that you have very little, if 
anything, that you can claim as being new except in re- 
mote combinations. You will likely decide in favor of 
the "patentability" of your invention; but it may be by 
such a narrow margin as to make the patent practically 
worthless except for "red tape," or you may decide that 
some if not all of the references do not meet your case 
and that the gist of your invention is new, if not the 
whole of it. Certain it is that with a full knowledge 
of your invention, and with these copies and papers be- 
fore you, combined with your reasons for desiring a pat- 
ent, you are the most competent person to decide as to 
whether you had better stop where you are or proceed to 
obtain a patent. Your expense has been small compared 
with the information you have received — say from ten to 
twenty dollars — and your action can be based upon in- 
telligence so necessary to your success. See office fees in 
Rules of Practice, page 7. 

The law charges a patentee with a knowledge of all prior patents 
in the line of his invention. Odiorne v. Winkley, 2 Gall., 50. 
Therefore it is that evidence may be given without notice in relation 
to the state of the art. Vance v. Campbell, I Black., 427. 



32 PROCURING PATENTS. 

After these researches if you procure a weak patent, it 
will not be because you expect it will be strong. You 
will not be groping in the dark and awaken to daylight 
by learning of the repeated rejections of your claims, 
followed by as many modifications of them by your 
solicitor until perhaps they consist wholly of modifica- 
tions made to avoid these references, and this, too, after 
your application for a patent has been filed in the Patent 
Office, and an expense of from forty to fifty dollars or 
more has been incurred. 

I am assuming that your solicitor will keep you advised 
as to the different references, rejections, modifications 
and eliminations which occur during the prosecution of 
your application. This, however, he may inadvertently 
fail to do, and more especially if he had solicited busi- 
ness by advertising "no patent, no pay, etc." If you are 
not thus advised you will not "awaken to daylight" until 
you receive your patent, and not then as a rule, unless 
you have had experience by which your attention is 
called to the claims. The probability is that your 
"awakening" will take place after you have expended 
much time and money and your credit, perhaps, in plac- 
ing your invention upon the market, by finding your pat- 
ent useless to prevent infringements, or your business 
stopped by injunctions on account of infringements, or 
by other legal proceedings against you, based upon prior 
patents. 

You have now learned the State of the Art, see page 16, 
and you have formed definite opinions with reference to 
what you are justly entitled. Take the patents of which 
you have received copies in the order of their dates and 
write clearly and succinctly your opinions with reference 
to them in their relations to your invention. Set forth fully 
the reasons for your opinion and send to your patent 
solicitor your opinions and reasons, with a request that he 



PROCURING PATENTS. 33 

proceed to prepare your application for a patent. He will 
then prepare the specifications, claims, etc., and forward 
for your signature. These application papers you should 
carefully examine before signing, and not sign unless you 
are satisfied with them; but after copying for your future 
reference, return them with your suggestions to your 
solicitor, who may adopt your suggestions in whole or in 
part and incorporate them in new specifications and 
claims, or he may return the papers for your signature 
without any changes and give very satisfactory reasons 
therefor. Few inventors are acquainted with the full 
scope and meaning of words and terms which custom at 
least, has made it not only proper, but necessary to be 
employed in practice in the Patent Office. Again, many 
things are implied, and therefore are not expressed, 
which are liable to mislead a person not familiar with 
the practice; but there is nothing so mysterious as to 
prevent a good conscientious patent solicitor, and many 
there are, from making such explanations to his client as 
to fully acquaint him with his own case. Such a solicitor 
appreciates an intelligent client, receives his suggestions 
cheerfully and gives them due consideration. 

A personal interview with your solicitor you will have 
observed is not necessary, but in complicated cases it is 
often advisable, and should be had soon after he receives 
your notes and comments concerning the references and 
before he prepares the specifications and claims; nothing 
can be gained by an earlier interview. 

It may be useless to add, but my own experience in- 
duces me to state that an inventor had better not under- 
take to be his own solicitor, as he will learn to his great 
disadvantage that he has a "fool for a client" very diffi- 
cult to discard, whose solicitor will be occupying the 
most of his time in the hopeless task of correcting his 
own mistakes. 



34 JOINDER OF INVENTIONS. 

With the facts, statutes, rules and decisions now before 
you and the invention itself; combined with the thorough 
knowledge of its scope and practical operation you will be 
able to definitely decide in advance all of the material 
questions necessary to be decided with reference to the 
patenting of your invention. It will doubtless be use- 
less for you to consult with any persons in relation to it. 
as you likely will so value your own fixed opinions founded 
upon the law and the facts as to cast aside the conflict- 
ing opinions of others, however much you may respect 
the authors of them. See references under specifica- 
tions and claims, and 



JOINDER OF INVENTIONS. 

A patent may embrace both a combination consisting of several 
elements, which together compose an organized machine, and sub- 
combinations consisting of fewer members of the same elements. 
Stevens v. Pritchard, 4 Cliff., 417. It is doubted, however, whether 
under the general patent law, improvements of different machines 
could regularly be comprehended in the same patent, Evans v. 
Eaton, 3 Wheat., 454, but undoubtedly distinct improvements in two 
different machines having distinct and independent operations cannot 
be joined in one patent. Moody v. Fiske, 2 Mason, 112. 

If inventions are connected in their design and operation they 
may be combined in one patent. Hogg v. Emerson, 11 How., 587. 
So, too, distinct improvements in one machine may be united in one 
patent, and an action lies for a piracy of any of the improvements 
although the defendants have not used the whole of the improvements. 
Moody v. Fiske, 2 Mason, 112. And inventions appropriate for use 
in the same thing connected together for the common purpose of 
making it, can be joined in one patent. Maxheimer v. Meyer, 9 
Fed. Rep., 460. 

There can be no objection to subdividing an invention into dis- 
tinct claims as the courts have held divisional patents valid. Brown 
v. Deere, Mansur & Co., 2 McC, 422. But it is a matter of 
some discretion with the Patent Office as to whether two or more in- 
ventions should be joined in one patent. Bennett v. Fowler, 8 Wall., 
445- 



SPECIFICATIONS AND CLAIMS. 35 

If the process and product are included in one patent as they may- 
be, the fact should be disclosed in the specifications and claims, that 
the inventor had both of these results in his mind. Welling v. Rub- 
ber Harness Trimming Co., 7 O. G., 608. 

A claim for the process of using a machine and a claim for the 
machine itself, cannot be made in the same patent. Gagez'. Kellogg, 
23 Fed. Rep., 891. 

As an article of manufacture a product cannot properly be em- 
braced in the same claim with the process. (Merrill v. Yeomans, I 
Holmes, 331.) It seems that the process is not patentable, and it is 
doubtful whether claims to the process and to the instrumentalities of 
the process make two subjects of patents. United States ex rel. 
Gorton v. Butterworth, 27 O. G., 717. 

A single patent may be taken for several improvements on one 
and the same machine, or for two machines, which are invented by 
the patentee, and conduce to the same common purpose and object, 
although they are each capable of a distinct use and application, 
without being united together. But a single patent cannot be taken 
for two distinct machines, not conducing to the same common purpose 
or object, but designed for totally different and independent objects. 
Wyeth v. Stone, I Story, 273. 

The principle seems to be that inventions to be joined in one pat- 
ent should be capable of being used, not only in connection but to 
attain a common end; but their actual employment together in 
practice does not seem to be required to sustain the validity of the 
patent wherein they are united, and the wrongful use of either of the 
separate machines is a violation of the patent right, pro tanto. Emer- 
son v. Hogg, 2 Blatch., 1. 

See Double Use, page 23; Combinations, page 37; Equivalents, 
page 40. 



SPECIFICATIONS AND CLAIMS. 

For Specifications in Rules of Practice, see page 7. 

The word "Specification," when used without the word "Claim," 
means description and claim. * * * The word "Specification" 
was used in Sec. 13 ot the Patent Act of July 4, 1836 (5 U. S. Statutes 
at Large, 122), in a different sense from that in which it is used in 
Sec. 53 of the Act of July 8, 1870(16 Ibid., 205), and in Sec. 4916 of 
the Revised Statutes, taken from Sec. 53. * * * * In Sec. 26 of 



36 SPECIFICATIONS AND CLAIMS. 

the Act of 1870, the word "Specify" is omitted and the words "Speci- 
fication and Claim" are used, applying the word "Specification" in 
that connection to the description alone. This state of things con- 
tinues in Sec. 4888 of the Revised Statutes. * * * * The word 
"description" is omitted in Sec. 53 of the Act of 1870, and in Sec. 
4916 of the Revised Statutes, and the word "Specification" alone is 
preserved, meaning, when used without the word "Claim," the 
description and the claim. Wilson v. Coon, 18 Blatch., 532. 

Specifications are to be construed liberally, in accordance with the 
design of the Constitution and the Patent Laws of the United States, 
to promote the progress of useful arts, and allow inventors to retain 
to their own use, not anything which is matter of common right, but 
what they themselves have created. (Ames v. Howard, 1 Sumn., 482; 
Neilson v. Hartford, Webb., P. C, 341;) Winans v. Denmead, 15 
How., 330. 

The two principal purposes of the specifications of a patent are, 
to enable the public to know of what the patentee claims to be the 
inventor, and to enable the public to practice the invention when the 
patent has expired. The patentee, in his specification, does not address 
himself to the uninformed but to persons of skill in the art to which 
the invention appertains, and he is only required to use such full, 
clear, and exact terms in his description as will enable persons of this 
class to produce the thing he describes. Forbes v. Barstow, 2 Cliff., 

379- 

Drawings which form part of the specification cannot be resorted 
to for the purpose of adding to, or in any manner enlarging the 
claim. Hogg et al. v. Emerson, 11 How., 587. 

It is often the misfortune of inventors to have their specifications 
drawn with very imperfect skill, but courts of law exercise great lib- 
erality in giving construction to these instruments. It may well be 
doubted whether their indulgence has not gone too far in this direc- 
tion, and their efforts to save the rights of inventors * * * * 
been perverted into an assumed license to indulge in loose descrip- 
tions. Middleton Tool Co. v. Judd, et al., 3 Fish., P. C, 141. 

The claim is the attempt on the part of the inventor to describe the 
very thing which he supposes he has invented and for which he asks 
a patent, Many v. Jagger, I Blatch., 372; it must be for something de- 
scribed in the specifications, so that any person of ordinary skill, or 
skill in the art covered by the patent, can make a mechanism which 
would contain the claim, Vogler v. Semple, 7 Biss., 382; and what 
an inventor does not claim he must be presumed to have abandoned. 
Conklin and Stafford, 5 O. G., 235; Evarts v. Ford, 5 O. G., 58. 



COMBINATIONS. 37 

An alternative claim to only one or the other of two things, but to 
neither positively is void; but a claim to each of two things, which- 
ever is used, is valid. Union Paper Bag Co. v. Nixon, 4 O. G., 31 = 

Where the inventor has discovered a new art, he has a right to the 
broadest claim which can be made in the case, not to the abstract 
right to the art without regard to the means, but to all means and 
processes which he has both invented and claimed. Amer. Bell Tel. 
Co. v. Spencer, 8 Fed. Rep., 509, and his claims should be construed 
broadly if first to enter a field of invention. Worswick Manufacturing 
Co. v. City of Buffalo, 20 Fed. Rep., 126; but a claim for a device or 
machine which is not the first of its kind in the field, that is broad 
enough to include all previous or future inventions for the same pur- 
pose, is invalid. Window Screen Co. v. Boughton, 1 B. & A., 327. 

A claim must be either for the structure, the combination of devices 
or the method of operation. Mathews v. Schoneberger, 18 Blatch., 
357- 

A claim is binding on the patentee as a limitation to the thing 
patented. Smith v. Elliott, 9 Blatch., 400; Dennis v. Cross, 3 Biss., 
389; Howe v. Williams, 2 Cliff., 245. 

A patentee cannot go beyond his claims and insist that his patent 
covers something not claimed, simply because it was described in his 
specifications. Lehigh Valley R. Co. v. Mellon, 104 U. S., 112. 

Inventors in drawing their specifications and claims have the 
right to assume a knowledge of the preceding state of the art in re- 
lation to them on the part of those desiring to understand them. 
Tompkins v. Gage, 5 Blatch., 268. See Procuring Patents, pages 
30; Intrinsic Value of Inventions, page 8; Development of Inven- 
tions, page 10; State of the Art, page 16; Scientific Aid, page 
12; Priority of Invention, page 28; Patentable Inventions, page 
18; Abandonment, page 24; Public Use, page 25; Joinder of In- 
ventions, page 34; Joint Inventors, page 27; Equivalents, page 
40; Substantially, etc., page 39; Construction of Claims, page 41; 
Double Use, page 23; Identity, page 102; Defeating Patents, page 
43; Re-issues, page 46; Infringements, page 100; Form, Size, Pro- 
portion, page 21, and 



COMBINATIONS. 

There are two classes or kinds of combinations recognized by our 
Patent Laws, which are properly the subject of a patent. The first 
may be defined to be one in which all the parts were before known, 
and where the sole merit of the invention consists in such an arrange- 



$S COMBINATIONS. 

meiit of them as to produce a new and useful result, or where, by 
adopting parts of a machine which may have been known for ages, 
an inventor has succeeded in making such an arrangement of them as 
that they produce a result never before obtained, and have, in that 
point of view, a merit of originality, and are, therefore, patentable. 
There is another class of combinations, where some of the parts or 
elements of the combination are new, and their invention claimed, 
but where they are using a combination with parts or elements that 
were known before. 

It is well settled that a patent may be obtained for the first class of 
combinations, but it is a principle well recognized that there is no in- 
fringement unless the party has used all the elements. If the combi- 
nation consists of A, B, C, three mechanical structures long known, 
and if the party sued has only the parts B, C, and not A, he is not 
regarded as an infringer; he must use all to subject himself to liabil- 
ity. If the combination have the other character to which I (the 
Court) referred, being, to a certain extent, new, but embracing some 
old parts or elements, then there is an infringement by the use of that 
part which is new and the invention of the patentee. Lee v. Blandy, 
I Bond, 361. 

All of the component parts must so enter into a combination of 
old elements that each qualifies every other. The result must be the 
product of the combination, which is patentable provided something 
new and useful is produced. If the elements of the combination act 
independently of each other, or if one element acts independently of 
the others, it is an aggregation of parts, and not entitled to protection 
as a combination. It is indispensable that a new and useful result 
should be produced, either by the invention of a new thing or a new 
combination of old things. Unless this is the case, even though the 
elements act reciprocally and in combination, the requirements of the 
law are not satisfied. The combination must be new, so must the 
result. (Clark Pomace Holder Co. v. Ferguson, 17 Fed. Rep., 79; 
Hailes v. VanWormer, 20 Wall., 353; Pickering v. McCullough, 104 
U. S., 310; Reckendorfer v. Faber, 92 U. S., 347; Packing Co. Cases, 
105 U. S., 566; Perry v. Co-Operative Co., 12 Fed. Rep., 436; Well- 
ing v. Crane, 14 Fed. Rep., 571 ; Slawson v. Railroad Co,, 4 Fed. 
Rep., 531; Stevenson v. Railroad Co., 4 Fed. Rep., 457; Manuf'g 
Co. v. Myers, 23 O. G., 1443; same case, 15 Fed. Rep., 237. ) 
Doubleday v. Roess, 11 Fed. Rep., 737. 

A mere aggregation of parts, whereof the patentee has not the 
exclusive right to either, and in which the parts have no new opera- 
tion and produce no result which is due to the combination itself, is 



SUBSTANTIALLY, MEANING OF. 39 

not patentable (Hailes v. VanWormer, 7 Blatch., 443), and see an 
analogous principle in cases which held that the mere appropriation 
of an old device to a new use is not patentable (Stimpson v. Wood- 
man, 10 Wall., 117; the cases collected in Curtis on Patents, Sec. 33 
and note; Bean v. Smallwood, 2 Story, 408; Winans v. R. R. Co., 
Ibid., 412: Hotchkiss v. Greenwood, 11 How., 248). * * * * 
The patent is itself prima facie evidence that the combination was 
new. Sarven v. Hall, 9 Blatch., 524. 

If the change is not important; if it merely makes the machine 
work a little truer, but that degree of trueness is of no essential im- 
portance, then certainly you cannot say that the combination is dif- 
ferent. If it is of essential importance, then you can say that the 
combination is different. Woodman v. Stimpson, 3 Fish., P. R., 98. 

The patentee of a machine by which an article is fabricated, may 
distribute the several mechanisms embodied in it into groups, each 
embracing such as co-operate in producing a definite effect upon the 
material, and may have a distinct claim for each group or combination, 
although no one of them is capable of any commercially useful result 
by itself, and the conjoined operation of every one, or an equivalent, 
is necessary to accomplish the object. A patent may be so framed, 
on this plan, as to obviate the danger of its being evaded by omitting 
parts of the combined machine when that is claimed. Wells z>. 
Jaques, 5 O. G., 364. 

A claim for a combination of elements does not cover those ele- 
ments separately. Evans v. Eaton, 1 Pet., C. C., 322. 

See Specifications and Claims, page 35; Infringements, page 
93; Equivalents, page 40; Joinder of Inventions, page 34; Double 
Use, page 23; Identity, page 102; aod 



SUBSTANTIALLY,— MEANING OF. 

The words "substantially as set forth in the above specification" 
have an important qualification of the broad language of the claim — 
one that limits and defines it by reference to the description that has 
gone before. Detmold v. Reeves, 1 Fish., P. C, 127. 

Effect must be given to the words "substantially as described" 
which are used in the claim, and their effect is to refer to the specifi- 
cation for the description of the elements of the combination which is 
wanting in the claim. Knox v. Murphy, 9 Blatch., 205. 

The last clause of the * * * claim "substantially as, and 
for the purpose set forth" throws us back to the specification for a 



40 EQUIVALENTS. 

qualification of the claim, and the several elements of which the com- 
bination is composed. The Corn-Planter Patent, 23 Wall., 181. 

To determine whether the machines are substantially alike or sub- 
stantially different, the jury is called upon to perform only a common 
duty. We look more to the substance of things than to their forms. 
Stansbury v. Taggart, 3 McL., 432. 

The words " substantially as specified" mean "substantially as 
specified" in regard to the combination which is the subject of the 
claim. Lake Shore, etc. v. Car Brake Shoe Co., no U. S., 229. 

The words "constructed substantially as above described,'' in the 
claim, must (in this case), in view of the whole specification, have a 
broader interpretation. The Gorham Mfg. Co. v. White, 7 Blatch., 

513. 

The words " substantially as described" must necessarily be im- 
plied if not expressed; and being so employed, they involve a refer- 
ence to the specification. Westinghouse Jr. v. Gardner & Ransom 
Brake Co., 2 B. & A., 55; Matthews v. Schoneberger, 4 Fed. 
Rep., 635. 

See Construction of Claims, page 41; Defeating Patents, page 43; 
Specifications and Claims, page 35; Infringements, page 93, and 



EQUIVALENTS. 

The term "Equivalent," as used in patent cases, has two mean- 
ings. The one relates to the results that are produced, and the other 
to the mechanism by which those results are produced. A mechanical 
equivalent, as generally understood, is when one thing may be 
adopted instead of another, by a person skilled in the art, from his 
knowledge of the art. Johnson v. Root, 1 Fish., P. C, 351. 

Mere colorable alterations, or adroit evasions, by substituting one 
mechanical equivalent for another in the combination which consti- 
tutes the machine, should never be allowed to protect a party. Foss 
v. Herbert, I Biss., 121. 

There are many devices in construction that can be made by a 
skillful mechanic, differing very much from each other in appearance, 
but which, in the eye of the patent law, are identical. For instance, 
an inventor, in the construction of his machine, desires a given power, 
in order to give practical operation and effect to his discovery. One 
mechanic may furnish the power by means of a lever, another by 
means of a screw — two very different instruments — yet, so far as the 
use of the instruments and so far as their purpose to furnish the 



CONSTRUCTION OF CLAIMS. 41 

power is concerned, they are regarded simply as mechanical equiva- 
lents, and the use of one in one machine does not distinguish that 
machine from a machine in which the other is found. So, too, a 
given power may be obtained by a spring or by a weight, or by a 
pulley — apparently very different devices. Yet, as they are used for 
the same purpose, and to accomplish the same end in machinery, 
they are regarded as substantially identical. Tatham v. LeRoy, 2 
Blatch., 474. 

The words "or the equivalent therefor" in a claim cannot be con- 
strued to extent to any improvements which are not substantially the 
same as those described, and which do not involve the same principle. 
The words embrace all alterations which are merely colorable. Such 
"colorable" alterations in a machine afford no ground for a patent. 
Where a patent is granted for a composition made of several ingre- 
dients it covers and embraces known equivalents of each of the ingre- 
dients. The equivalent of any substance is another substance having 
similar properties, and producing substantially the same result. 
Matthews v. Skates, 1 Fish., P. C, 602. 

See Identity, page 102; Infringements, page 93; Defeating Patents, 
page 43 ; Substantially, etc., page 39 ; Combinations, page 37 ; 
Specifications and Claims, page 35, and 



CONSTRUCTION OF CLAIMS. 

In construing the claim the Court takes into view the whole of 
what precedes it in the specification, and also such extraneous facts 
presented by the evidence, as may aid in giving construction to the 
patent, particularly the documents from the Patent Office which have 
preceded the grant of the Patent Office. Johnson v. Root, 1 Fish., 
P- C., 351. 

Claims which can be construed to embrace meritorious combina- 
tions and devices will not be construed to embrace a principle, and to 
be therefore void, though they are capable of being so interpreted. 
The Union Paper Bag Co. v. Nixon & Co., 4 O. G., 31. 

The claim is to be construed as if the words, "substantially as 
specified" are in it. Matthews v. Schoneberger, 18 Blatch., 357. 

A patentee is restricted to his claim, which must be construed with 
reference to the state of the art at the time of the invention. The 
whole patent, including specifications and drawings, is to be taken 
into consideration, but we look at that only for the purpose of placing 
a proper construction upon the claim. Pitts v. Wemple, 1 Biss., 87. 



42 CONSTRUCTION OF CLAIMS. 

If it was intended to claim parts of that which is described in the 
specifications as a whole, it should have been so stated; but where it 
claims the whole as described we cannot sever one part of the descrip- 
tion from the other, but we must take it in its totality and apply the 
description to the claim in construing it. Evans v. Kelly, 9 Biss., 251. 

The courts have no right to enlarge a patent beyond the scope of 
its claim, as allowed by the Patent Office, or the Appellate Tribunal, 
to which contested applications are referred. When the terms of a 
claim in a patent are clear and distinct (as they always should be) the 
patentee, in a suit brought upon the patent, is bound by it, (Merrills. 
Yeomans, 94 U. S., 56S:) he can claim nothing beyond it. But the 
defendant may, at all times under proper pleadings, resort to prior 
use and the general history of the art to assail the validity of a patent 
or restrain its construction. The door is then open to the plaintiff to 
resort to the same kind of evidence in rebuttal; but he can never go 
beyond his claim. As patents are procured ex parte, the public is 
not bound by them, but the patentees are, and they cannot show that 
their invention is broader than the terms of their claim; or if broader 
they must be held to have surrendered the surplus to the public. 
Keystone Bridge Co. v. Phcenix Iron Co., 5 Otto, 274. 

Cases arise not unfrequently where the actual invention described 
in the specification is larger than the claims of the patent; and in such 
cases it is undoubtedly true that the patentees, in a suit for infringe- 
ment, must be limited to what is specified in the claims annexed to 
the specification, but it is equally true that the claims of the patent, 
like other provisions in writing, must be reasonably construed, and in 
case of doubt or ambiguity it is proper, in all cases, to refer back to 
the descriptive portions of the specification to aid in solving the 
doubt, or in ascertaining the true intent and meaning of the language 
employed in the claims; nor is it incorrect to say that due reference 
may be had to the specifications, drawings and claims of a patent in 
order to ascertain its true legal construction. Brooks v. Fisk, 15 
How., 215. 

It is unnecessary to add to a claim an express declaration to the 
effect that the claim extends to the thing patented, however its form 
or proportions may be varied. The law so interprets the claim with- 
out the addition of these words. Winans v. Denmead, 15 How., 330, 

If by an examination of the specification, and applying to the then 
existing state of the art, we can learn what the invention was, then a 
claim, which was designed to be a condensed summary of the inven- 
tion, is to be construed so as to be co-extensive with the invention, 
if that can be done without doing violence to its language. Andrews v. 



DEFEATING PATENTS. 43 

Carman, 13 Blatch., 307; Whipple v. Middlesex Co., 4 Fish., P. C., 
41; Waterbury Brass Co. v. N. Y. Brass Co., 3 Fish., P. C., 47; 
Leroy v. Tatham, 14 How., 181; Haworth v. Hardcastle, 1 Webster's 
P. C , 480; Turrill v. Railroad Co., 1 Wall., 491. 

Claims and specifications are to be construed liberally but limited 
by the state of the art, showing the degree of improvement effected. 
Goodyear v. Berry, 2 Bond, 189; Mann v. Bayliss, 10 O. G., 789. 

Claims should be construed in view of the specification. Hayden 
v. Suffolk Mfg. Co., 4 Fish., 86; Goodyear v. New Jersey Central 
Railroad, 2 Wall., Jr. 356. 

The drawings as well as the specifications aie to be looked to in 
giving a construction to the claims of a patent in determiniug what was 
the invention of the original patentee. Swift v, Whisen, 2 Bond, 115. 

Technical claims in a patent are to be construed with reference to 
the state of the art, so as to limit the patentee to and give him the 
full benefits of the invention he has made. Estabrook v. Dunbar, 10 
O. G., 909. 

See Specifications and Claims, page 35; Combinations, page 37: 
Substantially, etc., page 39; Equivalents, page 40; Defeating Patents, 
page 43; Infringements, page 93, and 



DEFEATING PATENTS. 

To defeat a patent the prior knowledge and use must antedate the 
date of the invention, not the date of the patent. Judson v. Cope, I 
Bond, 327. 

If experiments on the principle of the invention are not continued 
to completion, the proof of such prior experiments does not establish 
the fact of previous knowledge or use within the meaning of the pat- 
ent law. Wayne v. Holmes, 1 Bond, 27. 

To defeat a patent, both priority of invention and reduction to 
practice are necessary. Parkhurst v. Kinsman, 1 Blatch., 488. Cox 
v. Griggs, 1 Biss., 362. 

Satisfactory and preponderating proof is required to defeat a pat- 
ent for want of novelty. Strauss v. King, 18 Blatch,, %%. 

The similar machine relied upon to invalidate a patent must have 
been in actual use and in successful operation. Seymour v. Marsh, 
2 O. G., 675. And a subsequent patentee, if he has reduced his in- 
vention to practice, will not be defeated by a prior iuvention which 
has not been reduced to practice. Bedford v. Hunt, 1 Mason, 302. 

Where a patentee has used reasonable diligence in perfecting his 



44 PATENT APPLIED FOR. 

invention, ne is entitled to priority over inventors who may have in- 
tervened between his invention and the issue of his patent. Johnson 
v. Root, I Fish., P. C. 351. 

Under the Patent Act of July 4th, 1836 (5 U. S. Statutes at Large 
117), a patent cannot be avoided by the fact that the invention 
patented was known and used in a foreign country before its discovery 
by the patentee, provided the patentee at the time of making his ap- 
plication for a patent believed himself to be the first inventor of the 
thing patented. No description in any printed publication of the 
thing patented can avoid the patent unless such description was prior, 
in point of time, to the invention of the patentee. It is not enough 
that the description in the printed publication should have been prior 
to the application for the patent. Bartholomew v. Sayer, et al., 4 
.Blatch., 347. 

Evidence of knowledge and use in a foreign country will not, of 
itself, defeat a patent or be material. Coburn v. Schroeder, 11 Fed. 
Rep., 425. 

Prior discovery and use in a foreign country, in the absence of its 
being patented or described in a printed publication, is no bar to the 
granting of a patent here. Toucey's Opinion, 5 Op., 19. And a pat- 
ent will be sustained in this country, even though the invention was 
in use in a foreign country before the patentee originated it, unless it 
is shown that the patentee did not believe himself to be the prior in- 
ventor when he filed his application for a patent; the burden of proof 
is on the defendant to a degree beyond a reasonable doubt. Roemer 
v. Simm, 5 O. G., 555. 

See Abandonment, page 24; Public Use, page 25; Priority of 
Invention, page 28; Joint Inventors, page 27; Infringements, page 93; 
Foreign Patents, page 122. 



PATENT APPLIED FOR. 

Until recently the Courts have not recognized an ex- 
clusive right to an invention pending an application for a 
patent. This doctrine was not adhered to in the fol- 
lowing case: 

U. S. Circuit Court, Northern District of Ohio, Eastern Division. 
Butler v. Ball. Decided April Term, 1886. Infringement — injunc- 
tion pending issue. 



PATENT APPLIED FOR. 45. 

Where a patent has been applied for on an invention the Court has 
jurisdiction to grant an injunction to restrain its infringement pending 
the hearing. 

Messrs. Baldwin & Shields and Mr. Charles C. Upham for the- 
complainant. 

Messrs. W. W. & J. J. Clark for the respondent. 

Welker, J. : 

The complainant claims to have invented a new and improved de- 
vice for attaching memorandum-tablets to telephones, and described 
in his bill, and states that he has applied to the Patent Office, under 
the statute, for a patent for his invention, which is now pending and, 
yet undecided. He alleges that the defendant is making and selling 
his device, and so doing him irreparable damage, and asks an in- 
junction pending the hearing. The defendant demurs to the bill: 
for want of equity. 

The question raised is whether the Court has jurisdiction of the 
subject-matter before the complainant obtains his patent. Revised 
Statutes, section 629, provides that the Circuit Court shall have 
original jurisdiction "of all suits, at law or in equity, arising under 
the patent or copyright laws of the United States." 

In Robb's P. C, 13, Justice Washington says: 

"The general law declares beforehand that the right to the patent 
belongs to him who is the first inventor, even before the patent is 
granted. Therefore any person who, knowing that another is the 
first inventor, proceeds to construct a machine acts at his peril, with a 
full knowledge of the law." 

In Jones v. Sewell, 6 Fish., P. C, 343, Justice Clifford says: "Inven- 
tions lawfully secured by letters patent are the property of the inventors, 
and as such the franchise and the patented product are as much en- 
titled to legal protection as any other species of property, real or per- 
sonal. They are, indeed, property, even before they are patented, 
and continue to be such without that protection until the inventor 
abandons the same to the public." 

It seems to me that the Court, under these cases, is sustained in 
holding that the complainant is entitled to the relief prayed for while 
his application for a patent is pending, and therefore the demurrer is 
overruled. (Reported in 28 Fed. Rep., 754.) 

[This decision is not, however, considered as being good law by 
many leading patent lawyers.] 



46 RE-ISSUES. 

RB-ISSUES. 

When a patent is issued it cannot be changed except 
to correct mistakes "through the fault of the Patent 
Office," and it must be judged as it is and not as it might 
have been. 

A re-issue is the only remedy for defective specifica- 
tions and claims in a patent except that of a disclaimer, 
and these defects must arise from "inadvertence, acci- 
dent, or mistake." See Rules of Practice, page 7. 

The great danger in re-issuing a patent is the liability 
to incorporate in it something not shown or described in 
the original application, which, if done, will, in a degree, 
invalidate the re -issued patent. See Law under this sub- 
ject. The inducements to add new matter or to give new 
coloring to old matter, to squarely meet existing and 
anticipated infringements are too great to make it reason- 
ably safe to presume that this has not been done; hence 
defendants in infringement suits on re-issued patents have 
frequently found successful defenses through these fatal 
mistakes of re-issues. 

Neither is it very consoling to know, see page 18, that 
all infringements on your defective patent count as noth- 
ing to you when you surrender your patent for a re-issue, 
and they will continue to count as nothing until your re- 
issue is made and then only from its date. You will lose 
all of the time between the dates of your detective patent 
and its re-issue, and this time will not be added to your 
xe-issued patent, which will expire at the same time of 
your defective patent, had it not been surrendered. 

The following statute, rules and decisions are quoted 
and cited for your guidance with reference to Re-issues: 

" Whenever any patent is inoperative or invalid by reason of a 
defective or insufficient specification, or by reason of the patentee 
^claiming as his own invention or discovery more than he had a right 
to claim as new, if the error has arisen by inadvertence, accident or 



• RE-ISSUES. 47 

mistake, and without any fraudulent or deceptive intention, the Com- 
missioner shall, on the surrender of such patent, and the payment of 
the duty required by law, cause a new patent for the same invention, 
and in accordance with the corrected specification, to be issued to 
the patentee, * * * for the unexpired term of the original pat- 
ent." U. S. Rev. Stat., Sec. 4916. 

The right to correct by re-issue a mistake, to the effect that the 
claims of an original patent are not broad enough, may be lost by 
unreasonable delay. * * * The making of a claim and the 
omission to claim other matter apparent on the face of the patent, is a 
dedication to the public of the unclaimed matter. If two years pub- 
lic enjoyment of an invention with the consent and allowance of the 
inventor is evidence of abandonment, and a bar to an application for 
a patent, a public disclaimer in the patent itself should be construed 
equally favorable to the public. Miller v. Bridgeport Brass Co., 14 
Otto, 350. A patent cannot be re-issued in order to expand the 
claim beyond the invention specified in the original patent. James 
v. Campbell, 14 Otto, 356; Swain Turbine Mfg. Co. v. Ladd, 12 
Otto, 408. 

It will not do for a patentee to wait until other inventors have 
produced new forms of improvement, and then apply for a re-issue 
for the purpose of enlarging his claims to embrace such new forms. 
Wooster v. Handy, 21 Fed. Rep., 51. 

An application for a patent for an improvement in caps covered 
a combination of the body of a cap and a neck protector. This was 
rejected on references, with the suggestion that the forward band be 
included, and the claim being so amended patent issued. The patent 
was afterward reissued for the original combination, on the ground of 
a mistake by a solicitor, of which the patentee first learned shortly 
before the re-issue. Held, that the validity of the patent is too 
doubtful to support a motion for injunction because of alleged in- 
fringement, for the reason that this does not appear to be such a mis- 
take as would allow him to resume what the record of the Patent 
Office would show he had for so long a time left surrendered. Arn- 
heim v. Finster, 32 O. G., 256. 

But where the original claim was so ambiguous as to suggest a 
doubt as to its sufficiency, and was also open to two different con- 
structions, held that it was not a mistake so obvious as to be apparent 
upon first inspection of the patent, and that the re- issue applied for 
within eleven months was made within a reasonable time, and that 
such re-issue was valid. Western Union Tel. Co. v. Baltimore and 
O. Tel. Co., 25 Fed. Rep., 30. 



43 RE-ISSUES. 

The executors or administrators of a deceased patentee may apply 
for a re- issue, or his assigns may do so. Carew v. Boston Elastic 
Fabric Co.. 3 Cliff., 356. The prima facie presumption is tha: a re- 
issued patent has been properly surrendered and re-issued, and that 
presumption will prevail in the absence of any controlling evidence 
to the contrary. Forbes z\ Barstow Stove Co., 2 C.irY. , 379. 

The rules of the Patent Office furnish a form of application for the 
surrender of a patent; but the Act of Congress does not in terms re- 
quire that it shall be in writing. Patents may be surrendered on 
petition or by delivery, as the rulesof the Patent Office may prescribe. 
Dental Vulcanite Co. :. Wetherbee, 2 Cliff . 555. 

A surrender of the patent to the Commissioner * * * * means 
an act, which in judgment of law extinguishes the patent. It is a 
legal cancellation of it, and hence can nc more be the foundation for 
the assertion of a right after the surrender than could an Act of 
Congress which has been repealed. The antecedent suits depend 
upon the patent existing a: the time they were commenced, and 
unless it exists, and is in force at the time of trial and judgment, the 
snit fails. Reedy -. Sec::. 23 Wall . 552. 

The surrender of a patent extinguishes it, and after its surrender 
pending suits founded upon it fail with its extinguishment. If a 
patent is surrendered for re-issue after final decree or judgment, the 
surrender has no effect upon a right passed previously into judgment. 
The right of the patentee then rests on his judgment or decree 
not on the patent. Mevs :. Conover, 11 O. G., mi. 

There can benoreczvery of damages on a re-issue for infringements 
prior to the issuance thereof. Agawam Co. :. Jordan, 7 Wall.. 583; 
Woodworthz'. Hall. 1 W. & M. . 248. 

En the case of Reed: Corse. 25 Fed. Rep., 05. the Court there 
decided that "if the claims of the re-issued patent, or of one or some 
of them, are either within the scope of the claim of the original pat- 
ent, or are legally identical with it, to that extent the re-issued pat- 
ent can and ought to be upheld;" Mr. Justice I [atthews, of the U S. 
Supreme Court, delivering the opinion of that Court at the Circuit. 

Where a patentee has sold all hi 5 right, title and interest in his 
patent excep: as to a single town, and subsequently at the request of the 
assignees had applied for and obtained a re-issue of the patent in his 
own name, which re -issued patent he had assigned as before : Held, 
that the surrender of the original patent at the request of the true 
owners was valid, and that, if the re-issue to the patentee was a 
clerical error, he had corrected it by the subsequent assignment 
Wing e: al, :. Warren, 11 O. G.. }j.2. 



DISCLAIMER. 49 

[Since the decision of Miller v. Bridgeport Brass Co. above cited, 
the U. S. Supreme Court, in the case of Gage v. Herring, 107 U. S., 
641, decided that if the claim of the original patent be repeated in the 
re-issue, it can there be maintained if valid, although it may be associ- 
ated with new claims for a new matter not appearing in the original, 
and wholly invalid. There are numerous instances also where Re- 
issued Letters Patent have been held to be valid since the Miller v. 
Bridgeport Brass Co. case, where such Re-issued Letters Patent were 
re-issued for the sole purpose and effect of going back to the original 
patent, as to the precise drawings and specifications and expression 
of claims.] See Defeating Patents, page 43, and 



DISCLAIMER. 

"Whenever, through inadvertence, accident or mistake, and with- 
out fraudulent or deceptive intention, a patentee has claimed more 
than that of which he was the original or first inventor or discoverer, 
his patent shall be valid for all that part which is truly and justly his- 
own, provided the same is a material or substantial part of the thing 
patented; and any such patentee his heirs or assigns, whether of the 
whole or any sectional interest therein, may on payment of the fee 
required by law, make disclaimer of such parts of the thing patented 
as he shall not choose to claim or to hold by virtue of the patent or 
assignment, stating therein the extent of his interest in such patent. 
Such disclaimer shall be in writing, attested by one or more witnesses, 
and recorded in the Patent Office; and it shall thereafter be considered 
as part of the original specification to the extent of the interest pos- 
sessed by the claimant and by those claiming under him after the 
record thereof. But no such disclaimer shall affect any action pend- 
ing at the time of its being filed, except so far as may relate to the 
question of unreasonable neglect or delay in filing it." U. S. Rev. 
Stat., Sec. 4917. 

A disclaimer is necessary only where the thing claimed without 
right is a material and substantial part of the patented article. Hall 
v. Wiles, 2 Blatch., 194. All that the disclaimer affirms is, that the 
plaintiff was not the first to invent what he disclaimed, but that it 
was previously invented by some one else. It does not affirm that the 
plaintiff did not invent it at all. Schillinger v. Gunther, 15 Blatch., 

3°3- 

If a patentee makes a claim which is not well founded in the same 
patent with other claims which are well founded he may disclaim, 
within a reasonable time, that which he had no right to claim, and 



50 MARKING ARTICLES "PATENTED." 

then the patent will be good as to the residue, — as good as if it had 
originally issued only for the claims which are valid. If he omits to 
make a disclaimer and brings a suit for the violation of his patent, 
and it satisfactorily appears upon the trial that he is entitled to be 
protected in a portion of the claims, if in his patent he is not entitled 
to be protected except to another portion, he is still entitled to dam- 
ages for the violation of the valid portion of his claims, the same as 
if all the claims were valid so far as regards the mere right of re- 
covery; but he gets no costs. This is the law. It has this qualifica- 
tion: if the jury are satisfied that there has been unreasonable negli- 
gence and delay on the part of the patentee, in making a disclaimer 
as respects the invalid part of his patent, then the whole patent is in- 
operative, and the verdict must be for the defendant. McCormick :.. 
Seymour, 3 Blatch., 209. 

What is "unreasonable delay v is a question to be settled by the 
Court — and not by the jury. * * * The Court will find that the 
time in reference to the question of delay, commences when the 
knowledge was brought home to the party that he was not the first 
inventor, or when it was declared by a court of competent jurisdiction 
to settle the question, that he was not the first inventor then it is that 
the time commences to run, and not until then. (15 How., 121 : 19 
How., 96: 20 How., 388.) Singer v. Walmsley, 1 Fish., P. C. 55S. 

Where the thing (or article) claimed without right is a part of the 
machine, if it is not an essential part, and was not introduced into the 
patent through willful default of the patentee to defraud or mislead 
the public, the want of a disclaimer in regard to it affords no ground 
for invalidating the patent. Hall z\ Wiles, 2 Blatch., 194. 

When a disclaimer is filed it becomes part and parcel of the orig- 
inal patent, as stated in the Statute referred to. See Re-issues, page 
46: Defeating Patents, page 43: Patent Laws, page 7. 



MARKING ARTICLES "PATENTED." 

It shall be the duty of all patentees, and their assignees and legal 
representatives, and of all persons making or vending any patented 
article for or under them, to give sufficient notice to the public that 
the same is patented; either by affixing thereon the word ''Patented," 
together with the day and year the patent was granted: or when 
from the character of the article this cannot be done, by affixing to 
it, or to the package wherein one or more of them is enclosed, a label 



MARKING ARTICLES "PATENTED." 5 I 

containing the like notice; and in any suit for infringement by the 
party so to mark, no damages shall be recovered by the plaintiff, ex- 
cept on proof that the defendant was duly notified of the infringe- 
ment, and continued after such notice, to make, use, or vend the 
article so patented. U. S. Revised Statutes, Sec. 4900. 

Every person who, in any manner, marks upon anything made, 
used, or sold by him for which he has not obtained a patent, the name 
or any imitation of the name of any person who has obtained a patent 
therefor, without the consent of such patentee or his assignees or 
legal representatives; or, 

First, In any manner, marks upon or affixes to any such patented 
article the word "Patent" or "Patented," or the words "Letters 
Patent/' or any word of like import with intent to imitate or counter- 
feit the mark or device of the patentee, without having the licence or 
consent of such patentee or his assignees or legal representatives; or, 

Second, In any manner, marks upon or affixes to any unpatented 
article the word "Patent," or any word importing that the same is 
patented for the purpose of deceiving the public, shall be liable for 
every such offence to a penalty of not less than one hundred dollars, 
with costs; one-half of said penalty to the person who shall sue for 
the same, and the other to the use of the United States, to be re- 
covered by suit in any District Court in the United States within 
whose jurisdiction such offence may have been committed. U. S. 
Revised Statutes, Sec. 4901. 

Actions for the recovery of the penalty must be brought in the 
name of an informer, and not in the name of the United States. 
* # _ # * Novelty and utility are essential elements of every valid 
patent issued. * * * * To justify the judgment for a penalty for 
putting the word "Patent" on an article there must be proof that the 
article was legally the subject of a patent if it had not been patented. 
U. S. v. Morris, 2 Bond, 23. 

Where a man is carrying on a manufacture, and necessarily em- 
ploys various persons, the acts of the persons he employs, if done 
according to his direction or with his sanction are in law his acts. 
Kass v. Hawlowetz, 33 O. G., 1135. 

It must appear * * * # that an intention on the part of the 
defendant to affix a stamp or plate indicating that there was at the 
time a present subsisting patent upon the machine; and unless that 
appears * * * * and if there is no existing patent upon the 
machine, or any part of it, the offence is not complete. Wilson v. 
Singer Manfg. Co., 12 Fed. Rep., 57. 

The language of Sec. 4901 is mandatory in form — "To be recovered 



52 PERFECTING INVENTIONS. 

by suit in any District Court of the United States within whose juris- 
diction such offences may have been committed." * * * * This 
act was passed long after the general act of 1839 provided for the 
recovery of penalties and forfeiture in any District where the offender 
might be found. * * * * The remedy to be pursued must be 
interpreted as a limitation confining the plaintiff to the District where 
the offence is committed, and the general provision of Sec. 732 that 
suits for penalties and forfeitures may be brought wherever the de- 
fendant may be found does not apply to suits under Sec. 4901. Pent- 
large v. Kirby, 19 Fed. Rep., 501. 



PERFECTING INVENTIONS BY REDUCING 
THEM TO PRACTICE. 

This is where trouble usually begins and often lingers 
almost indefinitely. The many experiments and mistakes 
between your invention and its practical operation if for- 
tunately this advanced stage is ever reached, will likely 
be sufficient to quite exhaust your patience if not your 
resources; that is, in case your invention is really valu- 
able, which we will assume it to be in our consideration 
of this heading of our subject, and we will also, for brev- 
ity, assume that it relates to an independent machine for 
general use. 

I base this opinion upon the well-known experiences of 
others of acknowledged ability in the line of their in- 
ventions, which may be considered as being a fair index 
in advance of your memoranda of experiments. If you 
are a practical workman in the line of your invention, or 
if you possess a thorough mechanical understanding with 
reference to it — which by many is considered preferable — 
your task is much lighter and any suggestions on my part 
may seem to be presumptuous; but believing that many 
of your mistakes will be born of your over-confidence, 
which is the rule and not the exception with inventors, I 



BY REDUCING THEM TO PRACTICE. 53 

will venture to drop a few hints that will at least have the 
merit of doing you no harm, and should you be benefited 
by them an acknowledgment from you by mail will in- 
deed be gratifying and your communication will be filed 
in my "secret archives." 

You are familiar with the state of the art and with 
practical machines of its class, if any there are, not only 
with reference to their operation, but with reference to 
their manufacture, the kind of material used, proportions, 
etc., etc. 

Learn all of the important changes which they have 
undergone in both material and manufacture from their 
first introduction and, if possible, learn the reasons for 
the changes; when practicable, secure a machine of the 
latest model and style which is the nearest approached 
by your invention, and at least reproduce it by drawings. 
You can thus learn necessary "fixed" distances and many 
other things that you will find very useful in planning 
your machine. 

Decide upon every detail before commencing opera- 
tions and combine beauty in design with commercial utility, 
but never sacrifice co7nmercial utility for beauty in design, 
as your machine must meet the requirements of use and 
practice. Employ in its manufacture the same kind and 
quality of material to be employed in your machines for 
general use. See Manufacturing, page 59. 

After having tested your machine yourself and so far 
perfected it as to pronounce it complete, have it operated 
by different persons whose occupations are in the line of 
its use, and more especially by some whose ingenuity has 
never been developed and quite likely never will be. Give 
as few instructions as possible and closely watch its 
operation. 

If you discover that it is being handled awkwardly, 
which may result in breakage, do not interfere with it but 



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h z - 

I ..it ;:::. ::* : : .... - .. : : -:. ;tr. t_. : = . 

i dose observation, that an inventor is incompetent to 

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BY REDUCING THEM TO PRACTICE. 55 

points and other imperfections will be developed by gene- 
ral use; so build but a limited number at first and place 
them near home, to be convenient for repairs. The next 
lot you manufacture will likely meet all requirements 
when you can safely call your invention reduced to prac- 
tice, and here permit me to state that you had better let 
"well enough alone" and not be making little changes. 
You likely know of machines which, to use a common 
saying, "have been improved until they are spoiled." I 
recall an instance where a successful machine was "im- 
proved," and to connect the device a hole for a 3-8 inch 
set screw was drilled near the center of a solid grey iron 
casting having over a four inch lateral surface. No one 
thought of trouble resulting, but these castings invariably 
commenced cracking at this set screw and finally broke, 
totally disabling the machines. The result was very dis- 
astrous, as thousands of them were scattered throughout 
the country. 

If you find it advisable to make a change, however 
slight, build a few machines of the new pattern and put 
them out near home, as in the first instance. 

My remarks thus far under this heading have been 
based upon the assumption, as stated, that "you are a 
practical workman in the line of your invention," or that 
you "possess a thorough mechanical understanding with 
reference to it;" but should I be wrong in my assumption 
and you are wanting in either or both of these qualifica- 
tions, you may, unfortunately, have to rely more or less 
upon the judgment of others in reducing your invention 
to practice, and you will meet with much difficulty in 
securing the services of competent mechanics who will 
comprehend the full nature and scope of your invention 
and the mechanical requirements necessary to reduce it 
to practical operation, unless you employ mechanics who 
are skilled in the art, that is in the line of your invention, 



5 6 PERFECTING INVENTIONS. 

and even they, as a rule, will be skilled only in the man- 
ner of construction, and not in the practical operation of 
similar machines. They will know how the different parts 
of similar machines are made, which they can easily du- 
plicate. They will also have theories as to the practical 
requirements of actual use which caused these parts to 
be employed; but they will be only theories upon which 
it will be unsafe to reason from cause to effect. The 
cause being the want and the effect the want supplied by 
the machine in operation — two essential extremes with 
which these mechanics have had nothing to do and they 
undertake to solve a problem from the means only, long 
since found to have been an impossibility. 

Confine these mechanics to their experiences and they 
are only qualified to duplicate or copy. If left to them- 
selves, with the plainest verbal instructions, your machine 
will so much resemble others of its class as to have no 
prominent identity, although it is essentially different, and 
you will indeed be surprised at the proportions of material 
in the new features of your machine and at the unexpected 
arrangement of parts. You test the machine thus produced 
against your better judgment and experience, the ex- 
pected result a failure, which in some way will be 
known to every man you meet on your way home, who 
will shower you with sympathy and regrets and pass on 
to enjoy the fun with your mechanics, who "knew all of 
the time that the machine wouldn't work, but they 
might as well take your money as anybody." This is 
not a picture of fancy drawn to amuse, but a painting 
from real life of many years ago, presented to instruct. 
The principal actors are living to-day. It is not an ex- 
ceptional circumstance, as like experiences are constantly 
being realized, but for a reason which I hope you will not 
anticipate, this particular one is impressed upon my 
mind. Your experience will quite naturally induce reflec- 



SIMPLICITY. 



57 



tion, which will result in a quick and full settlement with 
your mechanics. 

Your experience will also result in the conclusion that 
as you alone are in possession of the extremes from 
which the means can always be determined, you alone are 
qualified to improvise the means to be employed in arriv- 
ing at a practical termination. 

On further reflection you will conclude that your knowl- 
edge of the requirements of your machine, combined 
with your knowledge of the strength and proportions of 
similar machines, will enable you to approximately antic- 
ipate the means of your own which are the connecting 
devices between invention and operation; so you employ 
draughtsmen who will scrupulously follow your instruc- 
tions and mechanics who will execute them well and faith- 
fully and keep their ideas to themselves, except on those 
points which may be purely mechanical. As to these 
mechanical points, hear their reasons and decide for 
yourself. Acting upon these conclusions, and in all cases 
of doubt favoring strength and simplicity, you may rea- 
sonably expect as good results as you would attain were 
you "a practical workman in the line of your invention," 
or "possessed a thorough mechanical understanding with 
reference to it," which was previously assumed by me 
under this heading of my subject and to which, at this 
period of your operations, I invite your attention, in the 
hope and in the firm belief that you will be materially 
aided in your efforts. 



SIMPLICITY. 



In this connection, I wish to call your attention to the 
word "simplicity," and its meaning, which is so little un- 
derstood with reference to mechanics. This word, being 



58 SPECIAL MACHINES AND DEVICES. 

safe to use, on general principles, has become popular, 
and the "average man" will hurl it at you and your 
machine, as an evidence of his superior knowledge and 
wisdom, and accompany the hurling with an "I told you 
so" wink at the bystanders. This peculiar wink is born 
of ignorance and is as short-lived as the injury it does. 
You have learned to know it at sight, but you can't imi- 
tate it; your soul is n't small enough, nor never will be. 
By way of parenthesis, permit me to add: that it may 
prove to be a very valuable wink to you, as you can "size 
up" the crowd by it. The answering winks of approval 
will come from those you had better let alone. 

A machine is simple, however complicated may be its mechanism 
and parts; if the same results cannot be obtained by simpler mechan- 
ism or fewer parts. 

In comparing one similar machine with another for simplicity, the 
parts accomplishing the same results can only be considered; as in 
comparing two watches, one with and one without a second hand, 
the second hand and its connections should not be counted. 



SPECIAL MACHINES AND DEVICES. 

What we have considered with reference to "independ- 
ent machines for general use," will be more or less applic- 
able to special machines, and to attaching devices, like a 
hemmer to a sewing machine, hereinafter referred to. 
Draw the line sharply at commercial utility, simplicity and 
beauty in design, with a proper reduction to practice 
before an attempt at regular or general use. The best 
possible results may then be expected with the fewest 
annoyances, and at a minimum expense. 



MATERIAL AND MANUFACTURE. 5g, 

MATERIAL AND MANUFACTURE. 

Many good mechanical features are rendered worthless 
in practice by the employment of inferior material and 
by poor workmanship. The highest degree of perfection 
may be attained in forms, in proportions, in sizes and in 
patterns, but in the absence of good material and of good 
workmanship failure is certain. Paint, putty and varnish 
may, on exhibition, deceive the public, but will not deceive 
those who actually use your machines. 

Before perfecting your invention by reducing it to 
practice, you should decide upon the kinds and quality of 
material to be used in manufacturing for the trade. See 
page 53. In fact you must do this before you will be 
able to properly make the drawings of the different parts; 
as the forms, sizes and proportions of the patterns will 
necessarily be governed by the kinds and quality of the 
material to be used. 

If you are a novice in these matters you will make a 
serious mistake to proceed without first informing your- 
self regarding them. Consult persons experienced in 
the different kinds of material which you contemplate 
using, and receive their reasons for their opinions, as 
stated on page 9. 

After having decided upon the different kinds and 
quality of material, you will, as a rule, be able to decide 
upon forms, sizes and proportions by comparison with 
other pieces of the same kinds and quality of material 
vherever they may be used, which, in your judgment, 
require strength in actual practice equal to the require- 
ments of your own. 

After you have settled these points and before you 
make your drawings or set your pattern-makers at work 
you should learn of the shrinkage of different castings 
from different patterns, both of the same and of different 



6o 



MATERIAL AND MANUFACTURE. 



kinds of material. This you can easily do by consulting 
foundrymen. In each case call their attention to ribbing 
patterns, to insure lightness and strength, to prevent 
unequal shrinkage, and to prevent warping; this, more 
especially, if the castings are to be malleable. 

You likely will use metal patterns for general manu- 
facture, therefore, you must allow for two shrinkages in 
designing your wood patterns; one shrinkage from the 
wood to the metal patterns, and one shrinkage from the 
metal patterns to the castings for use. 

The quality of grey iron castings you will find very 
different, made at different foundries, as well as at 
the same foundry; not only in different meltings but in 
the same melting; so that you will be puzzled in deciding 
upon the quality to use and also in producing this quality 
regularly. To aid you in coming to a decision, I give 
you a test, as follows: Make a spool having two square 
ends, as shown full size in this engraving. The smallest 




diameter of the spool should be JJ of an inch. Make 
three castings from it — one from the first, one from 
the middle, and one from the last of the heat in the 
cupola. Place one end of each casting in a vise and 
attach a wrench to the other end. Connect a spring 
balance to the handle of the wrench just four feet ten 
and five-eighths inches from the center of the square of 
the casting. Lift on the spring balance until the casting 
breaks. If it breaks with a lift of twenty-two pounds the 
casting will be first-class in strength and what I term 



MATERIAL AND MANUFACTURE. 6 1 

"agricultural standard." The same test can be used on 
any grade of castings that you may decide to make, as 
you may require these test castings to break at a greater 
or less number of pounds lift on the spring balance. 

The three test castings, made from the same heat, as 
stated, will probably not break with the same number of 
pounds lift; but you will soon learn from experiments, in 
charging your cupola and in melting, to have them nearly 

alike. 

Make these test castings at every heat in manufacturing, 
and break them in the manner stated. Keep a record of 
the result of the tests of each heat, and also a record of 
the different kinds of pig iron used, the manner of charg- 
ing the cupola, including fuel and the amount of blast. 

By this method you will produce an even quality of 
castings, without which even quality, it will be very unsafe 
to manufacture. 

It will be necessary for you to make experiments in 
charging your cupola with the different kinds of iron, to 
obtain not only the required strength but the required 
temper. Always draw the metal from the cupola in a 
large ladle, so that it will be well mixed, otherwise tests 
of any kind will be of no use. 

You cannot exercise too much care in preparations for 
manufacturing, either with reference to your patterns or 
with reference to your special tools and machinery. Make 
like parts of your machine, so that they will be inter- 
changeable, and do not make the very common mistake 
of piling up finished material of any part or parts before 
you have assembled a few machines and know that all of 
your preparations are correct. The extra time and 
expense that will be required by this method in making 
your preparations to manufacture will, in a short period 
of time, be fully compensated by lessening the cost of 
labor, and by a more perfect production. Make and 



62 OPERATING INVENTIONS. 

connect coil springs so that the working tension will be 
•on closing, and do not use brass wire in their manu- 
facture. 

Avoid, if possible, the common mistake of under-esti- 
mating the time and cost of making these preparations, 
for these under-estimates are both disheartening to asso- 
ciates and disappointing to parties from whom you may 
have received and accepted orders for your machines. 

See Want of Means on this page. 



OPERATING INVENTIONS. 

Want of Means. — Undivided Interests. — Patent Right Men. — Lost 
Opportunities. — Locations, Special. — Locations, General. — Devices 
for Attachment. — Patent Agents and Patent Brokers. — Introducing 
Inventions. — Territorial and Shop Rights. — Grants. — Royalty. — 
Licenses. — Assignments. — Partnership, etc. 

WANT OF MEANS. 

From want of means you maybe unable to independently 
follow my suggestions and it will be necessary for you to 
enlist capital in your invention. I wish, therefore, to 
refer to the great injury inventors have done themselves 
by placing their inventions before the public in imperfect 
machines, which have caused great losses, that are 
charged to the cost of reducing inventions to practice. 

For example, $1,000 are expended in developing, pat- 
enting and perfecting an invention, when $25,000 worth of 
machines are manufactured for the market, and a reason- 
able expense incurred in advertising and selling. The 
machines are all sold to responsible purchasers under the 
usual guarantee to meet requirements, and are duly ship- 
ped to destinations regardless of distances. They develop 
weak points and imperfections in use, by reason of which 
the purchasers do not remit, and instead of receiving 



WANT OF MEANS. 63 

money as expected, extraordinary expenses are incurred 
by sending out mechanics, material and repairs to "patch 
up" the machines wherever found, amounting to several 
thousand dollars. 

If but one-half of the machines are returned with an 
additional expense of double freights and a discount of 
but twenty-five per cent, is made from the purchase price 
of the remainder, the outcome, under the circumstances, 
will be fortunate indeed. To all of these losses must be 
added a damaged reputation expensive to repair, in both 
time and money, however valuable the new features of 
the machines. These losses, caused by disregarding the 
necessary precautionary measures herein detailed, or by 
a want of knowledge of them, will be added to the origi- 
nal $1,000 and the whole amount will be charged to the 
expense of developing, patenting and perfecting the 

invention. 

Another expensive start is thus added to the thousands 
of previous ones to prevent capital, which is always 
timid, from joining inventors who are themselves, as a 
rule, responsible for this state of things. True it is that 
parties in interest, eager for dividends, and impatient at 
delays, frequently overrule inventors and bring on these 
disasters; but whoever may be responsible the effect is 
the same, with its disheartening influences, to operate 
against the success of inventors depending upon outside 
capital. Strange it is, that persons will jeopardize so 
much by undue haste with so many examples of these 
wrecks before them, but like consumptives dying "by 
inches," they can never find a fatal case which parallels 

their own. 

Returning to your case, "want of means." You have 
developed your invention to a degree necessary to enable 
it to be fully understood by another, and you are familiar 
with machines or devices of its class. You have made the 



64 OPERATING INVENTIONS. 

examinations (herein recommended) in the Patent Office, 
page 30, and you have before you copies of patents from 
which you know the state of the art, and you have a clear 
and definite idea of what you can claim as new, combined 
with statistics as to the probable demand, with carefully 
prepared estimates of cost, profits, etc. Digest all of 
these matters in their order, with memoranda, which you 
must study and be able to present intelligently. Formu- 
late a business programme and provide, when possible, 
for both a positive and a speculative dividend for the 
money to be invested. A positive dividend will inspire 
confidence; a speculative dividend will induce invest- 
ment and cannot be found in approved investment 
securities. 

Select a person possessing surplus means and present 
to him the whole matter; do not make rash and flighty 
statements, nor talk too much; better err on the conserv- 
ative side. If you fail with him, request his silence and 
try again. You are certain to find some one who will 
enlist in your enterprise. Your systematic business 
methods thus demonstrated will command confidence in 
you which is as necessary in securing to you the best 
results as is confidence in your invention. Your habits 
will be scrutinized and, perhaps, tested by invitations to 
"indulge" in a familiar and commonplace manner. 

Assuming that you and your invention meet approval 
and that negotiations are begun, your business inexperi- 
ence may place you at a disadvantage and you may be 
benefited by suggestions based on practical experience, 
statutes, rules and legal decisions. The experience of 
your friend in these matters may be limited also, so that 
with the most honest intentions on the part of you both 
a contract may be entered into which in law is very dif- 
ferent from what either of you intended. Time may 
disclose this fact to the injury of one or the other, when, 



UNDIVIDED INTERESTS. 65 

from the weakness of human nature, it may be used with- 
out mercy. 

We will first proceed upon the theory that your inven- 
tion is to be reduced to practice in an independent ma- 
chine, and is not a device or devices for attachment. I 
speak of "reducing to practice," assuming that you will 
not fall into the common error of arranging only to se- 
cure a patent except for speculative purposes, and if 
speculative only, I will not "speculate" with reference to 
the probable outcome, but in this regard you may be 
profited by my remarks on the practical line of your 
business and by the references cited. 

A common method of dealing is to assign an undivided 
half of an invention, or some 

UNDIVIDED INTERESTS. 

which I advise you not to do unless you would dispose 
of the whole for about the same consideration; as with 
an undivided interest your friend has the advantage, 
by being able to go into the market with your patented 
machine wholly independent of you. He has the 
means which you have not, and owning an undivided 
half or any undivided interest in your patent, however 
small, he can proceed without you, and whatever his suc- 
cess, in law he is not obliged to contribute to you or to 
any owners of the remaining undivided interests. 

You can also proceed just as independently without 
him, but how can you proceed without means which you 
now will find it very difficult to obtain, as you must com- 
pete in the market with your own invention. Your ad- 
vantage as inventor will be small against his capital, 
combined with the knowledge and interests he obtained 
from you, besides he may "keep in" with you until your 
ingenuity, skill and services can safely be dispensed with, 
when you may be consigned to the ranks of cold charity. 



66 OPERATING INVENTIONS. 

Your friend incurs an equal risk at the outset, as you 
may pocket what he gives you for an undivided half, 
desert him and "set up" for yourself when you have a 
fortunate combination which he has not, viz.: means and 
the skill of an inventor. 

With these facts before you, supported by the following 
decisions — see also Assignments, page 88, you likely will 
not assign undivided interests in your patent without pro- 
viding in the assignment or in a separate written contract 
that your interests shall be operated together, and that 
there shall be an accounting to each other on the basis 
agreed upon, and also other provisions necessary to fully 
include your agreements. The title to your patent might 
be placed in the hands of a trustee (to prevent transfers of 
any interests therein), and a separate written agreement 
made with reference to the whole matter. This latter 
method will likely afford the greater security and to my 
knowledge it has been approved and endorsed by parties 
who have adopted it. 

Abram M, DeWitt v. The Elmira Nobles Mfg. Co. This was "an 
appeal from an order made at the special Term sustaining a demurrer 
to the complaint. The complaint alleged that in 187 1, letters patent 
were issued to Watrous & Kellogg, for an invention relating to the con- 
struction of augers; that subsequently the interest of Kellogg there- 
in was assigned to the plaintiff; that defendant had used the rights 
granted by the letters patent at its manufactory in Elmira. It then 
alleges that said Watrous, one of the co-patentees, had an arrange- 
ment and agreement with the defendant, whereby the defendant was, 
"so far as he, said Watrous, was and is concerned," to have the right 
to use the said patented improvement, and that the said use thereof by 
the defendant was under such agreement, but that the same had 
reference solely to the rights and interests of the said Watrous. The 
defendant had notice of the assignment of the said one-half from 
Kellogg to the plaintiff/' 

E. P. Hart, for the appellant. 

S. Dexter, for the respondent. 



UNDIVIDED INTERESTS. 67 

BOARDMAN, J. : 

"The defendant is an owner, by assignment, of an undivided half 
of a patent, of use and value in the manufacture of augers, and for 
some time past bas been using such patent in making augers. The 
plaintiff is also the owner, by assignment of the other undivided half 
of said patent, and brings this action against the defendant to obtain 
an accounting for the use of said patent and improvement, and pay- 
ment to plaintiff of one -half of the value of the use of such patent 
or improvement during the time the defendant has used it. 

The demurrer insists that the Court has no jurisdiction of the 
subject of the action, and also that the complaint does not state facts 
sufficient to constitute a cause of action against the defendant. The 
demurrer was sustained upon the latter ground. 

These parties are not partners in the ownership of this patent. 
Beyond doubt they are tenants in common, each owning the one un- 
divided half. Each as an incident of his ownership, has the right to 
use the patent, or to manufacture under it. But neither can be com- 
pelled by his co-owner to join in such use or work, or be made liable 
without his consent for the losses which such co-owner may incur in 
using or working the patent. (Clum v. Brewer, 2 Curt., C. C, 506- 
524; Curtis on Pat., Sec. 136, etc.) There has been no conversion of 
property by a sale of plaintiff's share to the defendant. If there 
had been, it would have given plaintiff a right of action against the 
vendor for the value of his interest wrongfully sold; or he could follow 
the property, claiming his interest and right of possession. There 
has been no destruction of plaintiff's property or interest under the 
patent. The nature of the property is such that either owner may 
use it, and neither can exclude the other from the use. The rights, 
being abstract and intangible, cannot be destroyed by use or sale; nor 
can plaintiff lose his right except by his own act and consent. 

In the case of real estate, one tenant in common cannot be called 
to account for the use, profits, or rent of the property enjoyed only 
by him, if he has not excluded his co-tenant therefrom. (Woolever 
v. Knapp, 18 Barb., 265; Dresser v. Dresser, Ibid., 300; Wilcox v. 
Wilcox, 48; Ibid., 327; Curtis on Pat., Sec. 189.) So long as one 
tenant does not exclude his co-tenant, he does not become liable for 
the use of the joint property. These rules apply equally to chattels, 
and, with great force, to the property in a patent right, in which, 
from its nature, there can be no exclusive use or enjoyment, and each 
owner can at the same time have, use and enjoy the thing patented, 
or its use or its product." 

In opposition to these views is the case of Pitts v. Hall (3 Blatch., 



OPERATING INVENTIONS. 

::: tired in Curtis on Pat., 4th edition, 211 N. . That case holds 
that where one tenant in common in a patent right sells the whole 
inte est in the patent, his co-tenant may maintain an action for an 
infringement against his co-owner and recover his proper dama~T 

It is certainly very doubtful if this case accords with the law ap- 
plicable to ownership in common, as held by other courts and judges. 
But, in that case, the action is said to be maintainable upon the 
ground that one tenant had sold the whole interest, thereby consti- 
tuting a conversion of the share belonging to his co-tenant. In the 
case under consideration the vendor to defendant did not assume to 
sell anything but his own rights, and did not attempt to sell the 
right of his co-owner. It is, therefore, distinguished from the case of 
Pitts : Hall, and should not be controlled by it 

The plaintiff's counsel has presented with great clearness the diffi- 
culties, if not the wrongs, following our construction of the law; they 
are also shown by Judge Hall in the case cited. A contrary decision 
would involve other hardships, if not wrongs of equal or gre atei 
severity. 

The adjustment of the rights of tenants in common is exceedingly 
difficult, and, in some cases, impossible, upon any just and equitable 
basis. Under the law as administered in this State (New York we 
think the judge at special term was correct in holding that no cause 
of action was set up in the complaint. The order of the special term 
should, therefore, be affirmed, with $10 costs and expenses of print- 
itfa Leave to amend, upon payment of costs of demurrer, and of 
this appeal wiihin twenty days. 

Lkarnkd, P. J.: 

T agree with the result of the foregoing opinion. It seems to me 
that the rights of the parties are more plainly seen, if we observe 
that letters patent for an invention simply give a right to bring at 
against other persons, and thus prevent them from doing what they 
might otherwise lawfully do. (Hawks :. Swett, 11 S. C, 146.) The 
rules applicable to tenants in common of thirds may therefore not be 
applied to the united owners of what consists only in authority to 
bring actions." Order accordingly. [Reported in 5th Hun.. 501. 
Affirmed in 65 N. Y.. 459. Court of Appeals.] 

"It: the case of joint patentees, where no partnership agreement 
exists, such co partnership does not result from their relation as joint 
patentees; and the assignee of one joint owner does not become a 
partner of his co -proprietor. They are simply joint owners or tenants 
in common, and their rights, p : wen and duties as respects each other 



UNDIVIDED INTERESTS. 69 

must be substantially those of joint owners of a chattel. Pitts v. Hall, 
3 Blatch., 201." 

An injunction should not issue against the use, by one of the joint 
patentees, of the thing patented, and the principle decided by him 
(Judge Curtis) * * * * is that one tenant in common of letters 
patent has the same right as the others to make, use, and sell the 
thing patented, and a licensee under one tenant in common cannot 
be enjoined on a bill by another tenant in common. Dunham v. 
Indianapolis & St. Louis R. Co., 7 Biss., 223. 

Opinion by Treat, J., Circuit Court for Missouri. (1878.) State- 
ment of facts. The plaintiff avers, substantially, that he is the owner 
of an undivided two-thirds interest in the patent described, and that 
he is so doing under cover of their common patent. Hence the 
claim for damages for said infringement — not for the entire amount 
thereof, but for the plaintiff's proportion, to wit, two-thirds. The 
direct question presented is whether an infringer of a patent can 
escape liability for his infringement because he is a joint owner of the 
original patent upon which the infringement occurs. The cases cited 
do not reach the precise point raised by the bill. It is evident that if 
a stranger was guilty of the infringement he would be compelled to 
respond in damages. Can a part owner infringe the common patent, 
and escape all liability? If he can it is obvious that, however small 
his aliquoit part, he can make the enjoyment of the patent valueless 
to his joint owner. He has, by virtue of the joint ownership, a right 
to use the patent, but he has no right more than a stranger to infringe 
the same. If there is an infringement the right of recovery is in the 
party wronged. All the joint owners should ordinarily be parties 
plaintiff, but if the wrong doer is one that is guilty to the damage of 
the other joint owner, the latter should not be left remediless. As to 
such infringement they are strangers. All the joint owners are on 
the record, and the amount of the recovery determines their respec- 
tive interests. The infringer cannot escape the consequences of his 
wrong to his joint owner by averring that he was by his infringement 
injuring not his joint owner alone, but himself also. In other words, 
he cannot under cover of his interest in the common patent shield 
every wrong doer who may infringe that patent. He can, as to the 
other part owners, by infringing, become liable to them for the wrong 
done. The amount of recovery will be in proportion to their 
respective interests. Were this not so, the door would be open to 
the grossest frauds by one joint owner against all other joint owners. 
The case of Pitts v. Hall, 3 Blatch., 204, and the comments thereon 
in Curtis on Pat., Sec. 108, et seq, y <\.o not cover the case. The question 



70 OPERATING INVENTIONS. 

there discussed pertains to the use by one joint owner of the common 
property. * * * * In this case an entirely new and distinct 
proposition is presented, viz. : One of the several joint owners is not 
using the common patent, but an infringement of the patent. His 
defense is that inasmuch as he had a right to use the original patent 
without question from his joint owners, * * * * he has a right 
also to use any infringing patents, on the ground that his right to 
use the original being vested in him, his use of other and infringing 
patents did not cause any wrong or injury to himself as joint owner. 
In other words, the defendant contends that as one joint owner he 
could use the common patent without being liable to account to the 
joint owners; that he could not be sued as an infringer for using what 
he had a right to use by virtue of his proprietary interest; and there- 
fore if he used an infringing device he was only injuring himself 
in what he had a proprietary right to forbid. This would be correct 
if no interest except his own were involved, for a man may do what 
he pleases with his own, and "volenti non fit injuria" would be, a 
fo7'tiori, applicable in such a case. If a stranger were using the in- 
fringing patent this action would unquestionably lie against him; and 
the question before us is whether it will lie against a joint owner, or, 
in the language of the bill, whether he, under cover of his joint 
ownership can infringe and escape liability. So far as the acts out- 
side of his interests, or rights or powers, as a joint owner, there is no ad- 
equate reason for treating him qtioad hoc. otherwise than as a stranger. 
If this be not so, then one joint owner may destroy without remedy 
the rights of the other joint owners. Demurrer overruled. Herring 
-j. Gas Consumers^ Association, 3 McL., 206. 

See Territorial and Shop Rights, page 80; Assignments, page SS; 
Employer and Employe, page 114; Partnership, page 93. 



PATENT-RIGHT MEN. 

The time has passed for the successful operation of so- 
called patent-right men in the sale of patents "on the 
road," by Towns, Counties and States; as the people 
generally can refer to too many precedents of losses by 
their neighbors in these speculations. So many worth- 
less patents have in this way been sold almost every- 



PATENT-RIGHT MEN. 7 1 

where, that a man now thus engaged in the patent-right 
business requires strong certificates of good character to 
be sent in advance to insure for him a respectful hearing, 
and then he will quite likely write home for money to 
enable him to leave town. 

True, many valuable patent interests have been dis- 
posed of in this manner; but, as a rule, they have been 
disposed of to persons who, from their want of experi- 
ence, good business qualifications or means (if not from 
the want of them all) have been unsuccessful in their 
operations, or have permitted these interests "to sleep" 
on their hands and have therefore been losers. The re- 
sult is that patented articles must now reach the public 
through the regular channels of trade, and patent inter- 
ests must be disposed of at the source of these channels, 
either to parties engaged in business in the line of the 
inventions, or to those willing to engage in it. The 
practical questions are, can you deal advantageously with 
parties established in the business to which your patent 
relates, or must you establish a business of your own? 

Continuing in the assumption that "your invention re- 
lates to an independent machine for general use and is 
not a device for attachment,'' you will find it exceedingly 
difficult to deal on a living basis with parties established 
in your line; or in fact on any basis, however meritorious 
your invention. 

They may appreciate the new features of your ma- 
chine and concede its superiority over all others, includ- 
ing their own; but they will tell you that "theirs gives 
satisfaction to the trade; that it has been approved and 
established, whilst yours has not; that their patterns, tools 
and machinery are especially adapted for the manu- 
facture of their own machines, and would be practically 
worthless for the manufacture of yours; that their me- 
chanics, salesmen, agents and customers are familiar with 



72 OPERATING INVENTIONS. 

theirs, and while yours is simpler, both in construction 
and in operation, more or less friction would result from 
the change which they desire to avoid." They know 
that their business would be seriously crippled with your 
machine prominently on the market; but this is a possi- 
bility too remote to influence them in your favor, as they 
anticipate that it will be some time before you will be 
able to give your machine a general introduction and 
then, from their personal experiences and observations, 
they will expect imperfections common to introductions 
that will give you a "set back," from which your recovery 
will be slow, if you recover at all. 

After having these experiences you very naturally will 
go back to first principles and endeavor to secure an 
independent start; either with means of your own, or 
by soliciting private capital, or by organizing a stock 
company on a basis whereby you are to receive a portion 
of the paid up stock in consideration of your patent 
interests, a very common method and also a very dan- 
gerous one; for inventors find it necessary, as a rule, to 
permit the majority of the stock to be held by those who 
contribute the money. This programme will place your 
interests wholly in the hands of others, and the chances 
are that if your invention proves to be valuable a "freeze 
out" programme will be inaugurated and carried out by a 
"do nothing" policy, by the issuing of bonds, or by some 
other means to depreciate the value of your stock, and 
finally "wipe it out" altogether by a foreclosure under 
the bonds, or by other procedures. 

You will find it a safer way to take less of the paid up 
stock for your patent interests, and in your transfers of 
them to the company, provide instead, for a small royalty 
on each machine manufactured to be paid to you annually. 
This method will, as a rule, be more satisfactory at first 
to investors, and it destroys to a great degree the induce- 



LOST OPPORTUNITIES. 73 

ments to "freeze you out" on your stock, and you cannot 
be "frozen out" on your royalty. 

You should make reasonable provisions for your pro- 
tection by requiring a certain amount of royalty to be 
paid annually, by requiring continuous reasonable busi- 
ness diligence, by requiring an annual statement at the 
time the royalty is due and payable to be made to you in 
writing of the number of machines manufactured during the 
next preceding fiscal year, which statement may be verified 
by your examination of the books in person, or by proxy, 
or both, by requiring that the machines shall be numbered 
consecutively, and that each machine shall be properly 
and prominently stamped with its name, with the word 
"patented," and with the dates of all patents thereon, by 
requiring that no competing machines shall be manufac- 
tured, and by requiring that the validity of your patents 
shall not be questioned, and that no attempt at their 
evasion will be made. 

The proportion of the capital stock and the amount of 
royalty you should receive will depend, of course, upon 
circumstances. Equity seems to require that they should 
amount to sufficient to insure to you in dividends and roy- 
alty combined, ten per cent, of the gross amount of sales 
made to jobbers, dealers and agents, and to a proportionate 
per cent, on sales made to the retail trade, assuming that 
your invention possesses an average earning capacity. 

No general rule can be laid down with reference to 
this matter. Twenty per cent, may be more equitable in 
some cases than five per cent, in others; so each case 
must be decided by itself. This brings us to a point 
where it will be well to consider 

LOST OPPORTUNITIES. 

You must keep in mind the fact that "you can never 
grind the grist with the water that is passed," hence you 



74 OPERATING INVENTIONS. 

should never reject a proposition hastily that possesses a 
degree of fairness; better utilize this water than to wait 
until a "dry time" and look back with regrets at your 
"lost opportunity." 

However much you may value your invention your 
success will depend upon its valuation by others, — those 
having the means and time perhaps to devote to it. You 
can establish a price; but you cannot make the price 
current, so too you can keep your invention as many do 
who are in great need of even a small income from it 
and would like just one more opportunity to "grind the 
grist." Am I too conservative? Go and talk with fifty 
inventors without selection having patents over five years 
old, and see if you can send me the names of three who 
will disagree with me in this matter. You may charge 
each failure to poor management, which in your opinion 
will not meet your case, and certainly not if you will 
"hew to the lines" herein drawn in your interest. 



LOCATIONS— SPECIAL, 

Much depends on location, more perhaps than you 
without experience will understand. As a rule you should 
select a point for your operations where similar enter- 
prises are successful, and where the citizens have learned 
of the business, and personally know of its importance, 
stability and prosperity, in addition to the fact that their 
locality has been proved a favorable one for its head- 
quarters. You will not receive the answer that "I don't 
know anything about the business, and I never invest in 
anything that I don't know about," or that "you cannot 
successfully compete with established concerns," when 



LOCATIONS — SPECIAL. 75 

they know of and, perhaps, own stock in a junior concern 
that is really senior in the volume of business and in 
financial success, or that "there is no room for your enter- 
prise," when they know that theirs are running over time 
more or less, and are behind in filling orders, or that 
"your financial success will be very uncertain," when 
there is no stock of their similar enterprises on the market, 
and many other answers which their home experiences 
have settled in your favor. 

It is a mistaken idea that you should not locate so 
near competition, unless your trade is to be local; but I 
am assuming that it is to be general, and if it is, the nearer 
you locate to competition the better. 

You will meet with the same competition in trade if 
you locate elsewhere, and you will not have the aid of 
your competitors in bringing you business, which they 
cannot avoid when you are their neighbors. Their own. 
customers will call on you before closing with them, and 
will see your improvements and works, which many 
never would see were you located elsewhere. 

It is not necessary for you to travel all about the 
country on borrowed money, perhaps, to select a location 
of this kind. You know, or ought to know by this time, 
where similar enterprises are located and all about them, 
and if you don't know you can easily learn without leav- 
ing home. Go to some friend in business who is a sub- 
scriber to Commercial Reporters and get him to "help 
you out." Subscribe for papers representing your line of 
business and write their editors for some information. 

Having selected a good location your task is one-half 
performed. You have a business programme similar to 
the one laid down on pages 63 and 64. Select and secure 
the proper person or persons to aid you and your success 
is reasonably certain. 



7 6 



OPERATING INVENTIONS. 



LOCATIONS— GENERAL. 



The recognized value of manufactories in developing 
and adding to the material growth and wealth of localities 
is a great incentive in securing their establishment by 
enterprising citizens, and the result is, that inducements 
are offered at many places for this purpose. An adver- 
tisement in newspapers representing manufacturing in- 
terests will bring you letters which will put you in com- 
munication with parties from different localities, that may 
lead to negotiations and to satisfactory results. 

First of all consider the advantages and disadvantages 
of a location for your business before deciding, and, 
however great the inducements, do not handicap your 
business by locating where you cannot successfully com- 
pete with rival concerns. 

Having established your enterprise I call your atten- 
tion to pages 59 and 62. 



DEVICES FOR ATTACHMENT. 

If your invention relates to devices for attachment, 
like a hemmer to a sewing machine, you have at least 
two practical methods of introducing it to the public. 

First, by manufacturing and selling to manufacturers 
of, or dealers in, the principal machines, or by establish- 
ing agencies of your own, and 

Second, by licensing the manufacture of your invention 
for the purposes of attachment. 

As a rule the latter will be the better course to pursue, 
and in pursuing it a practical method will be to complete 
your devices and respectively arrange them for attach- 
ment to the different machines. Send one so arranged 
to each manufacturer with explicit instructions as to its 
attachment and use. 



PATENT AGENTS AND PATENT BROKERS. 77 

You will soon receive inquiries as to terms and thus 
enter into and perhaps complete negotiations for their 
introduction and use with little trouble and expense. 
Whatever your terms, make them the same to all manu- 
facturers. Confine them to the machines of their own 
manufacture, and make proper provisions in your contract 
for your protection. See pages 73, 81 and 82. 

In thus sending your devices to manufacturers you incur 
a risk, which unfortunately is too often incurred by the 
operations of superintendents and mechanics of the 
manufacturers, to whom the devices will likely be referred 
for their "expert" opinions. 

Superintendents and mechanics you will find as a rule, 
from jealousy or other causes, are unfriendly to your 
inventions in their lines, and will resort to all sorts of 
quibbling methods to cause them to be condemned. It 
is very safe to conclude that when you have anticipated 
all of the objections possible for you to anticipate that 
may be made by one of these especially "wise" men, 
you will be met with others as frivolous and ridiculous as 
ingenuity can invent and jealousy conceive. 

If this programme is not an immediate success in at 
least one prominent instance, it may be well for you to 
personally visit establishments until you secure the 
adoption of your invention by one, to which you can 
refer in your correspondence with the others. This 
adoption will force, as it were, its general adoption, 
when your success is assured. 



PATENT AGENTS AND PATENT BROKERS. 

You likely have and will receive circulars and letters 
from patent agents and patent brokers setting forth their 
wonderful facilities for the sale of patents, and perhaps 



78 OPERATING INVENTIONS. 

claiming to see in your invention the filling of a "long 
felt want" for some customer or customers of theirs, and 
finally winding up with some kind of a proposition and 
with enclosed power of attorney for your signature. You 
will likely read of "a certain amount of money to be ad- 
vanced by you, just to contribute in advertising," or 
something to that effect. 

There was a concern of this kind in Chicago that 
seemed to do a thriving business, and, I believe, at the 
expense of many innocent inventors who made advance- 
ments of money from time to time as requested, and each 
advancement "would be all sufficient to effect the ex- 
pected sale." The sale, however, for different reasons 
given at different times, did not "come off," and the in- 
ventor instead of receiving the expected draft, was con- 
tinually shown by letters the necessity of making other 
small advancements. 

An acquaintance of mine from Iowa, after having made 
several remittances, and who was earnestly requested to 
make another, wrote me with reference to the whole 
matter and requested that I call on the house in his in- 
terest, which I did and wrote him of the swindle. He 
came on here to "get his money back;" but he was never 
able to find the "Head Man" in, though an attendant was 
positive that "his matter was nearly closed," and it was 
so far as further remittances were concerned. 

Experience proves that sales of patents and patent in- 
terests in this manner cannot be made advantageously, 
except perhaps in very exceptional cases, for reasons 
which we will consider under 

INTRODUCING INVENTIONS. 

Your invention must be appreciated before reasonable 
offers for its purchase can be expected, and to be appre- 
ciated it must be understood. It is unsafe to assume that 



INTRODUCING INVENTIONS. 79 

a person skilled in the line of your invention will fully 
understand it, and if he does, his adverse interests, for 
reasons already given on page 77, may cause him to keep 
his good opinion of it to himself. This fact may account 
for valuable inventions represented in machines and de- 
vices being passed unnoticed by judges and all, except 
in a general way, and may also account for the premium 
ribbons streaming from the very inferior machines and 
devices of your competitors. 

A well represented mechanical production, possessing 
but very little merit will, on exhibition, meet with more 
public favor than a mechanical production possessing the 
highest degree of merit if poorly represented or not rep- 
resented at all. It had better not be exhibited than to be 
represented in an incompetent manner; for it will be as- 
sumed that the representative has shown it "for all it is 
worth," and it will be judged on the basis of this as- 
sumption; but if it is not represented no judgment is 
likely to be passed upon it. In the former case it may be 
condemned absolutely, while in the latter it may, as we 
have seen, be passed unnoticed. 

Your invention, therefore, must be properly represented 
in its introduction. This requires a thorough knowledge 
of it by the exhibitor, combined with a knowledge of the 
principles, manufacture and operation of similar machines 
and devices. People judge by comparison; hence your 
machine or device will be compared with others of its 
class and the exhibitor must be able to point out the 
differences intelligently. This requires a knowledge born 
of experience in the line of your invention. A first-class 
general mechanic or a first-class business operator, with- 
out proper assistance, will be of but little, if any use. 
You may "stuff" either for the occasion, but a few aver- 
age questions will lead them from the line of the "stuff- 
ing," when their efforts will prove to be failures. 



80 OPERATING INVENTIONS. 

No one is qualified to meet ail of the requirements 
necessary in the introduction of your invention but your- 
self, and you may not be qualified in a business sense, 
but in this you can more easily secure competent aid. 



TERRITORIAL AND SHOP RIGHTS. 

You may have an opportunity to dispose of Territorial 
Rights and it will be well to consider what bearing the 
sale may have upon your remaining interests. To bring 
matters near your home, to be more easily understood, 
we will assume that you have sold your patent interests 
in an adjoining county and have given a grant in the 
usual manner. You find your patented machines in use 
in your own county, and learn that they were purchased 
from the purchaser of your patent interests in the ad- 
joining county. You don't like it as it interferes with 
your trade or prevents you from disposing of your inter- 
ests in your own county to an advantage. What are you 
going to do about it? You likely expect that you have 
an adequate legal remedy, but you have not. The prin- 
ciple is the same with reference to States, and the effect 
the same if you grant limited shop rights or licenses in 
the usual manner; so you had better incorporate some 
qualifications in your papers, which we will consider after 
having examined the following legal decisions: 

The only question presented in this case is: Does the purchaser 
of a patented article, lawfully manufactured and sold without restric- 
tion or condition within his territory by the territorial assignee of a 
patent right, convey to the purchaser the right to use or sell the arti- 
cle in another territory for which another person has taken an assign- 
ment of the patent? When a patented product passes lawfully into 
the hands of a purchaser without condition or restriction, it is no 
longer within the monopoly, or under the protection of a patent act, 



TERRITORIAL AND SHOP RIGHTS. 8 1 

but outside of it. (Chaffee v. Boston Belting Co., 22 How., 217; 
Bloomer v. Millinger, 1 Wall., 350; Aiken v. Manchester Print 
Works, 2 Cliff., 435.) In Goodyear v. Beverly Rubber Co., 1 Cliff., 
348, Mr. Justice Clifford commenting upon the cases of Bloomer v. 
MacQuewan, 14 How., 549 and Wilson v. Rousseau, 4 How., 646, 
says: "Both of these cases affirm the rule that when the patented 
machine rightly passes to the hands of a purchaser from the patentee, 
or from any other person by him authorized to convey it, the 
machine is no longer within the limits of the monopoly, and is no 
longer under the peculiar protection granted to patented rights." 

It is clear that by such a sale the purchaser acquires an absolute 
title to the manufactured product which is the subject of a patent, 
and may deal with it in the same manner as if dealing with any other 
kind of property. He may use it, repair, improve upon it, or sell 
it. Subsequent purchasers acquire the same rights as the seller had, 
and may do with the article or its materials whatever the first pur- 
chaser could have lawfully done if he had not parted with the title. 
* * * * If this were not so, the purchaser of a manufactured 
patent article of wearing apparel might be liable for the use of the 
patented article in every town and city through which he might 
travel in which there might be an assignee of a district territorial 
right, although he had purchased it of one having a lawful right to 
make and sell it, so as to convey an absolute and unrestricted title. 
Adams v. Burks, 1 Holmes, 40; see also Boyd v. Brown, 3 McL., 295, 
where the same points were involved and decided in the same way. 

The exclusive rights of a patentee are specially guarded from intru- 
sion; but the contracts which he makes to share them with third 
persons are interpreted and enforced just as other legal engagements. 
Morse, et. al., v. O'Reilly, 6 Penn., L. J., 501. 

Contracts touching the transfer, use, and enjoyment of patented 
inventions are to be construed in the same way as contracts respecting 
other species of property, so as to carry into effect the intention of the 
parties, as collected from the language employed, the subject matter, 
and the surrounding circumstances. Star Salt Caster Co. v. Cross 
man, 3 B. & A., 281. 

A territorial grantee cannot be restrained from advertising and 
selling within his own territory, even though the purchasers may take 
the patented articles outside of the vendor's territory. Hatch v. Hall, 
30 O. G., 1096. 

Qualify your grants and licenses by restricting the 
grantees and licensees in their operations to the exact 



82 OPERATING INVENTIONS. 

territory described in the papers, and provide that no 
sales shall be made to the trade, or to any other party or 
parties, in wholesale lots, without an express agreement 
with the purchasers that the articles shall not be re-sold 
to be used outside of the specified territory, and also 
provide that no sales shall be made at retail of the articles 
to be used outside of the specified territory in any case 
where the grantees or licensees, as the case may be, or 
their agents and employes know, cr have reason to be- 
lieve, that their articles are to bt so used. If a license, I 
call your attention to the "provisions" on page 73. 

Do not overlook the fact that an established 

Royalty is held by the courts as being a proper 

measure of damages in infringement suits. See 
page 84. 

See Infringements, page 93 ; Assignments, page 88 ; License, page 
85; Royalty, page S^, and 

GRANTS. 

For a definition of the word " Grant " see under Assign- 
ments on page 88, and Rules of Practice, referred to on 
page 7. 

An assignee to the exclusive right under a patent within a particular 
district can maintain an action for infringement within that district. 
Wilson z/, Rousseau, 4 How., 646. 

Where the exclusive right to use, rent, and vend to others to use, 
a patented invention was granted for a specified territory, but not the 
the right to manufacture, it was held that the grantee (so called) was 
a mere licensee, and that he could not bring an action for an infringe- 
ment of the patent in his own name. Hill v, Henry, I Holmes, 317. 

See the next preceding subject " Territorial and Shop 
Rights," and consider the remarks and decisions there- 
under with reference to their bearing on " Grants." See 
also Licenses, page 85; Infringements, page 93. 



ROYALTY. 83 

ROYALTY. 

On page 73, I named several "provisions" which ought 
to appear in your Royalty contract; but gave no reasons 
therefor, believing that their importance were too self- 
evident to require any explanation. On page 77, I wrote 
"whatever your terms make them the same to all manu- 
facturers," for two important reasons not there given. 
One of these two reasons you will fully understand after 
having read the legal decisions under this heading (Roy- 
alty) with reference to "an established Royalty being a 
measure of damages in Infringement suits." The other 
reason is of commercial importance in the way of fair 
dealing so necessary to a permanent business success. 

Patentees are entitled to but one royalty for patented machines, 
and consequently when a patentee has himself constructed the ma- 
chine and sold it, or authorized another to construct and sell it, or to 
construct and use, and operate it, and the consideration has been paid 
to him for the right, he has then to that extent parted with his mo- 
nopoly, and ceased to have any interest whatever in the machine so 
sold, or so authorized to be constructed and operated. Where such 
circumstances appear the owner of the machine, whether he built it 
or purchased it, if he has also acquired the right to use and operate it 
during the lifetime of the patent, he may continue to use it until it is 
worn out in spite of any and every extension subsequently obtained 
by the patentee or his assigns. Bloomer v. Millinger, 1 Wall, 340. 

Where a patent is apparently valid and in force, the party using it, 
receiving the benefit of its supposed validity, is liable for royalties 
agreed to be paid, and cannot set up as a defence the actual invalidity 
of the patent. * * * * The rule is well settled that in a suit 
upon a license or contract which contains a covenant on the part of 
the licensee by which the validity of the patent is admitted, and the 
licensee has had the benefit of the license, that he is estopped to 
deny the validity of the patent by setting up anything contrary to the 
admissions in his contract. Marsh v. Harris Manfg. Co., 22 N. W. 
Reporter, 516; Marston v. Swett, 82 N. Y., 526. 

Where certain defendants take a license from a patentee on an 
agreement to pay certain license fees, so called, and gave a note 
therefor, the invalidity of the patent was held a good defense to the 



84 OPERATING INVENTIONS. 

note. (Saxton v. Dodge, 57 Barb., 84. In harmony with this decis- 
ion are the cases of Cross v. Huntley, 13 Wend., 385; Head v. Stev- 
ens, 19 Ibid., 411; McDougall z\ Fogg, 2 Bosw., 387) * * * * 
A decree of the United States Court * * * "* declaring a patent 
void, is conclusive as between the parties. (People v. Johnson, 38 
X. Y., 63; Marsh v. Pier, 4 Rawle., 273; Hopkins v. Lee, 6 Wheat., 
109; Gates v. Preston, 6 Thomp. & Cook, 530.) Hawkes v. Swett, 6 
Ibid., 529. 

A license to one to use a patented invention in his own proper 
business does not authorize one to grant a special license and collect 
royalties thereunder. In the absence of affirmative authority ex- 
pressly given by the license to dispose of the licenses to others, and 
to allow it to be availed of by others, it must be read as if it forbade 
a disposition of it to others. Putnam v. Hollender, 19 O. G., 1423. 

Without an eviction or its equivalent royalties must be paid as per 
the agreement of parties. McKay v. Jackman. 17 Fed. Rep., 641; 
White v. Lee, 14 Fed. Rep., 789. 

" I (the Court) am still of the opinion declared in the National Car 
Brake Shoe Co. v. Terre Haute, etc. Co., 19 Fed. Rep,, 514, and 
Wescott v. Rude, Ibid,, 830, that evidence of settlement for infringe- 
ment is not competent to show a license fee or royalty; and upon the 
same principle a license (for the future) given wholly or partially in 
consideration of a settlement for infringement is not admissible in 
evidence against a stranger. Gottfried v. Crescent Brewing Co. ; 
Same v. Hack, et al., (Circuit Court, District of Indiana, December 
5, 1884,) 22 Fed. Rep., 433. 

A Royalty established, constitutes the primary criterion of dam- 
ages in actions at law (Burdell v. Denig, 2 Otto, 716) but in any 
court this rule can only be applied where there is a fixed and estab- 
lished price at which a license is granted. No price can be said to 
be fixed, or royalty established, where the patentee varies his price 
according to the courage or the ability to resist infringers, or where 
there are other circumstances showing the absence of a fixed and 
established fee. Black v. Munson, 14 Blatch., 265. An established 
royalty, when one is proved, is unquestionably the safest rule of com- 
pensation. Enigh v. B. & O. R. Co., 6 Fed. Rep., 283. 

An established royalty is clearly and properly the usual measure of 
damages in case of articles manufactured and sold. Star Salt Caster 
Co. v. Crossman, 4 B. & A., 566. 

Where a license under letters patent provides for the payment of a 
royalty of $5.00 a machine, but subject to a reduction of S3.CX) if paid 
promptly, it will, on the question of assessing damages against a third 



LICENSES. 85 

party, be considered as establishing a royalty at the lower rate. 
Where the question is close, a revoked or abandoned license may be 
considered as throwing light upon the value which an inventor has 
put upon the right to manufacture his patented machine. Where 
a patentee does not desire to retain a close monopoly of his invention, 
the amount of the royalty which he has fixed in his dealings with 
other parties may be considered as a proper compensation in dam- 
ages where the character of the infringer does not justify exemplary 
damages. Agreements made to secure the manufacture and intro- 
duction of a patented machine are not to be considered as unqualified 
licenses fixing a royalty or license fee which can be accepted as 
establishing within the language of the Court in Seymour v. McCor- 
mick, 16 How., 480, the average of actual damages sustained by a 
patentee when his invention is used without license. Graham v. 
Geneva Lake Crawford Manfg. Co., 32 O. G., 1603. 

A royalty or license fee to be binding on a stranger to the licenses 
which established it must be uniform. Proof of a single license is not 
sufficient to establish a market price. Westcott v. Rude, 27 O. G., 719. 

No royalty shall be paid by the United States to anyone of its 
officers or employes for the use of any patent for the system, or any 
part thereof mentioned in the preceding section; nor for any such 
patent in which said officers or employes directly, or indirectly, are 
interested. Revised Statutes, section 1673. The " preceding sec- 
tion " (1672) reads as follows: "The breech-loading system for mus- 
kets and carbines adopted by the Secretary of War, known as ' The 
Springfield breech-loading system ' is the only system to be used by 
the Ordnance Department in the manufacture of muskets and carbines 
for the military service." 

See Territorial and Shop Rights, page 80; Grants, page 82, and 

LICENSES. 

For a definition of the word "Licenses" see under Assignments on 
page 88; also Rules of Practice in the United States Patent Office 
referred to on page 7. 

Every person who purchases of the inventor or discoverer, or with 
his knowledge and consent constructs any newly invented or discovered 
machine, or other patentable article, prior to the application by the 
inventor or discoverer for a patent, or who sells or uses one so con- 
structed, shall have the right to use, and vend to others to be used, 
the specific thing so made or purchased without liability therefor. 
U. S. Revised Statutes, section 4899. 



86 OPERATING INVENTIONS. 

The difference between a license and an assignment was determined 
by the Supreme Court in Gay lor v. Wilder, 10 How., 477, where it 
was held that an assignment of a patent short of the entire and un- 
qualified monopoly, is a mere license. Curtis, in his work on Pat- 
ents, sections 212, 213, says that while an assignment vests in the 
grantee the exclusive right either for the whole country, or for a par- 
ticular district, of making and using the thing patented, and of grant- 
ing that righc to others, a license is an authority to exercise some of 
the privileges secured by the patent, but which still leaves an interest 
in the monopoly in the patentee. * * * Surrender of a license 
by a part of the licensees does not release the remaining licensees 
from their obligations under the license. Theberath v. Celluloid 
Manfg. Co., 3 Fed. Rep., 143. 

If a license to use a patented machine be conditional, the condi- 
tions must be performed, or there can be no light to the use. The 
use of the machine under such circumstances is an infringement, and 
may be enjoined. There is no pretense of right under the license in 
such a case, and the question must be considered as though no license 
had been granted. If a defendant justifies under a license, he must 
show the performance of the conditions of the grant. Equity will di- 
rect the cancelment of a contract for fraud or mistake, but it cannot 
alter the contract. Brooks v. Stolley, 3 McL., 523. 

Licenses need not be recorded. Chambers v. Smith, 5 Fish., 
P. C, 12. 

A mere license is not apportionable so as to permit the licensee to 
grant to others separate rights to use or work the patent, by subdi- 
viding the rights that may have been granted to himself. It is an 
open question whether a license to a party and his assigns is a per- 
sonal privilege, or whether it confers the power of assignment in its 
entirety to third persons. (Curtis on Pat., Sec. 213; Brooks v. Byam, 
2 Story, 525.) The Consolidated Fruit Jar Co. v. T. W. Whitney, et 
al., 1 B. & A., 306. 

Mere license to a party, without having his assigns or equivalent 
words to them, saying that it was meant to be assignable, is only the 
grant of a personal power to the licensee, and is not transferable by 
him to another. Oliver v. Rumford Chemical Works, 109 U. S., 75. 

It is familiar learning that the Patent Act of 1836, * * * ex- 
pressly recognizes the assignment of the whole or any undivided part 
of a patent, and an assignment of the entire right for any specified 
part of the United States, and provided that an action for damages 
against an infringer might be brought against any patentee, assignee, 
or grantee of the exclusive right: Statutes of 1836, sections 11 and 



LICENSES. 87 

14, 5 U. S. Statutes at Large, sections 121 and 123. It has been uni- 
formly held that when the interests do not come within this descrip- 
tion, but as a license, an action at law must be in the name of the 
patentee. The leading case is Gaylor v. Wilder, 10 How., 477. 
Judge Shepley has held that the same rule holds good in equity: 
Hill v. Whitcomb, I Holmes, 317, or rather that the licensee himself 
could not maintain the suit alone. He said that the contract was 
valid, and could probably be enforced in equity against the grantor, 
and persons trespassing with notice of the contract, but not as a pat- 
ent suit, and he dismissed the bill, because the jurisdiction of the 
Circuit Court in that case depended on the suit being maintained 
under the patent law. This last point has been decided otherwise by 
the Supreme Court, and by Judge Clifford in this court. Two ap- 
peals in equity have been sustained in patent suits between citizens of 
the same State by an exclusive licensee himself, against the patentee 
and others jointly trespassing with him knowing of the license. 
Littleneld v. Perry, 21 Wall., 205; Star Salt Caster Co. v. Crossman, 
Cir. Ct. Mass. Dist., May Term, 1878. (Reported in 3 B. & A., 281.) 
In both these cases the owner of the patent was a defendant, and, of 
course, could not sue himself. Therefore, the question whether a 
third person could be thus sued was not touched. I (the Court, Low- 
ell, J.) must adhere to Judge Shepley' s decision on that point. Ham- 
mond v. Hunt, 4 B. & A., in. 

Licensees have no interest capable of affording the foundation of a 
suit. Grover & Baker Sewing Machine Co. v. Sloat, et al., In Eauity, 
2 Fish., P. C, 112. 

A mere licensee cannot sue strangers who infringe. In such case 
redress is obtained through or in the name of the patentee or his 
assignee. Littleneld v. Perry, 21 Wall., 205. 

"It has been uniformly held that the right of action or suit at law, 
or in equity, thus given by the Statute refers back to section 11 (Act 
of 1836) and that those persons may bring actions or suits in their own 
names who are there mentioned, and, in general, that none others 
may do so. Therefore, a mere licensee cannot maintain an action at 
law, nor can he, generally speaking, sue in equity, without joining 
the patentee." Gaylor^. Wilder, 10 How., 477; Blanchard v. Eld- 
ridge, I Wall., Jr., 337; Potter v. Holland, 4 Blatch., 206; Sanford v. 
Messer, 1 Holmes, 149. The Statute of 1870, which codified the pat- 
ent laws, adopted a more condensed form of statement. In section 
36 (16 Statutes at Large, 203) it says simply the patentee may grant 
an exclusive right, under his patent to the whole, or any specified 
part of the United States, instead of the exclusive right to make and 



88 OPERATING INVENTIONS. 

use, and to grant to others to make and use the thing patented; and 
the same language is found in Revised Statutes, section 4898. But 
the decisions, again, are uniform that this change of phraseology in- 
volves no change in the law. See Paper Bag Cases. 105 U. 5.. 766; 
Nelson v. McMann, 4 B. & A., 203. * * * * The plaintiff 
(licensee) will (not) be without remedy if he cannot find the patentee 
(licensor) or if the patentee is hostile. * * * No doubt there are 
methods known to a court of equity by which the suit may proceed 
for the benefit of the only person who is entitled to damages. Wilson 
e. Checkering, et al., 14 Fed. Rep.. 919. 

Do not overlook the fact that an established 

Royalty is held by the courts as being a proper 

measure of damages in infringement suits. See 
page 84. 

For implied licenses see Employer and Employe, page 114. See 
also Assignments, page SS; Grants, page 28: Territorial and Shop 
Rights, page 80; Royalty, page S3 



ASSIGNMENTS. 



"Every patent or any interest therein shall be assignable in law by 
an instrument in writing; and the patentee or his assigns or legal 
representatives may, in like manner grant and convey an exclusive 
right under his patent to the whole or any specified part of the United 
States. An assignment, grant, or conveyance shall be void as against 
any subsequent purchaser or mortagee for a valuable consideration, 
without notice, unless it is recorded in the patent office within three 
months from the date thereof."' U. S. Revised Statutes, Sec. 4S9S. 

Interests in patents may be vested in assignees, in grantees of ex- 
clusive sectional rights and mortgages, and in licenses. 

An assignee is a transferee of the whole interest of the original 
patent, or of an undivided part of such whole interest, extending to 
every portion of the United States. The assignment must be written 
or printed and duly signed. 

A grantee acquires by the grant the exclusive right, under the 
patent, to make and use, and to grant to others the right to make 
and use, the thing patented, within and throughout some specified 
part of the United States, excluding the patentee therefrom. The 
grant must be written or printed and duly signed. 



ASSIGNMENTS. 89 

A mortgage must be written or printed and duly signed. 

A licensee takes an interest less than or different from either of the 
others. A license may be oral, or written, or printed and duly signed. 

An assignment, grant, or conveyance will be void as against any 
subsequent purchaser or mortgagee for a valuable consideration, with- 
out notice, unless recorded in the Patent Office within three months 
from the date thereof. 

No instrument will be recorded which does not, in the judgment 
of the Commissioner, amount to an assignment, grant, mortgage, lien, 
encumbrance, or license, or affect the title of the patent or invention 
to which it relates. 

Assignments which are made conditional on the performance of 
certain stipulations, as the payment of money, if recorded in the office, 
are regarded as absolute assignments, until cancelled with the written 
consent of both parties, or by the decree of a competent court. The 
office has no means of determining whether such conditions have been 
fulfilled. 

In every case where it is desired that the patent shall issue to an 
assignee, the assignment must be recorded in the Patent Office at a 
date not later than the day on which the final fee is paid. The date 
of the record is the date of the receipt of the assignment at the office. " 

See Rules of Practice referred to on page 7. 

Assignments of patents are valid as between the parties if they are not 
recorded, and an assignment to make and sell includes the right to 
use. Turnbull v. Weir Plow Co., 6 Biss., 225; Moore v. Marsh, 7 
Wall., 515; Perry v. Corning, 7 Blatch., 195. 

While an Assignment is one of the most common papers 
to be executed in relation to Letters Patent, it is the most 
frequently informal and defective in its execution to carry 
out the intent of both parties to any transaction. It is 
necessary for an assignment to have any other effect than 
a "quit-Claim/' to carry upon its face on the part of the 
assignor of the patent a warranty as to his title to the in- 
terest he professes to convey. 

The form of assignment provided by the Patent Office 
Rules incurs no liability of any description on the part of 
the assignor. 

An assignment also should be witnessed by two parties. 



90 OPERATING INVENTIONS. 

While this may not be absolutely necessary in every State 
in the Union, still it is the only evidence of title. There 
are many conditions under which it has been necessary 
that the instrument should be witnessed by two parties. 

Under the Statutes of New York, the assignment of patents duly 
acknowledged before a Notary Public are sufficiently proved. New 
York Pharmical Association v. Tilden, 14 Fed. Rep., 740. 

Assignments must be wholly in writing, and this condition can 
under no circumstances be abrogated. U. S. Rev. Stat., Sec. 4898. 

Assignments of patents are not required to be under seal, even 
though the assignment is made by a corporation. The Statute simply 
provides that " every patent, or any interest therein, shall be assign- 
able in law by an instrument in writing." A corporation may bind 
itself by a contract not under its corporate seal, when the law does not 
require the contract to be evidenced by a sealed instrument." Bank 
of Columbian. Patterson, 7 Cranch., 299; Fleckner v. Bank of. the 
United States, 8 Wheat., 338; Andover, etc., Turnpike Corporation 
V. Hay, 7 Mass., 102; Dunn v. Rector, etc., of St. Andrew's Church, 
14 Johns. (X. Y.), 118; Kennedy v. Baltimore Ins. Co., 3 Har, & J. 
(Md.), 367; Stanley v. Hotel Corporation, 13 (Me.), 51. An assign- 
ment by a corporation is executed in the manner required by law, by 
an agent when making a simple contract in writing for the corpor- 
ation, and by its authority. The rule as laid down by the authorities 
is that the agent should, in the body of the contract, name the cor- 
poration as the contracting party, and sign as its agent or officer. 
Mott v. Hicks, I Cow. (N. Y.), 513. (Bowen v. Morris, 2 Taunt., 374; 
Shelton v. Darling, 2 Conn., 435; Brockway v. Allen, 17 Wend. 
(N. Y.), 40.) The attachment of shares of the capital stock of a cor- 
poration of a stockholder therein in no way effects the right of the 
corporation to assign its patent interests. Gottfried v. Miller, 14 
Otto, 521. 

A simple assignment conveys no right of action for past infringe- 
ments of a patent, and if a simple assignment is made, it leaves in the 
assignor of the patent, a right of action against all parties, infringers 
of the patent, even against the assignee himself. Moore r. Marsh, 
7 Wall., 515. 

Inventions may be assigned before they are patented. Cammeyer 
V. Newton, 4 Otto, 225. Hendrie v. Sayles, 8 (Ibid.), 546. Herbert 
v. Adams, 4 Mason, 15. 

It is an easy matter, however, to express in every assignment by a 
special clause, a conveyance of all claims for past infringements, 



ASSIGNMENTS. 91 

whether of damages or profits, and the rights thus conferred will be 
carried by the assignment. Hamilton v. Robbins, 3 B. & A., 157. 

An assignment of an interest in an invention secured by letters 
patent, is a contract, and like all other contracts is to be construed so 
as to carry out the intention of the parties to it. * * * * There 
is no artificial rule in construing a contract, and effect if possible is to 
be given to every part of it in order to ascertain the meaning of the 
parties. Nicolson Pavement Co., v. Jenkins, 14 Wall., 452; see also 
Seymour v. Osborne, 11 Wall., 516; Cammeyer v. Newton, 4 Otto, 
225 (supra). 

An agreement to account and pay a specified royalty contained in 
an instrument of assignment forms part of the consideration of the 
assignment, and does not reduce the grantee to the position of a li- 
censee. Neither does the clause of forfeiture for non-performance 
contained in an assignment, reduce the grantee to the position of a 
licensee for the non-payment or for non-performance: forfeitures may 
be enforced as for condition broken, but until it is enforced the title 
granted remains in the assignee. An assignment of an imperfect in- 
vention with all the improvements upon it that the inventor may 
make is equivalent in equity to an assignment of the perfected re- 
sults. In such case the assignees become in equity the owners of the 
patent issued upon the invention when perfected, and, if the assignor 
takes the legal title, he holds it in trust for them, and should convey. 
In a contest between an assignor in equity and his assignee, a court 
of equity will give the same effect to an equitable title that it would to 
one that was legal. Littlefield V. Perry, 7 O. G., 964. 

No extension or re-issue of a patent is conveyed by any assignment 
unless such assignment unequivocally expresses that fact. But as- 
signees using patented machines at the time of a renewal, or an ex- 
tension of a patent, will have a right to continue their use. Wilson v. 
Rossau, 4 How., 645. Holmes & Spaulding, Com. Dec, 4 O. G., 

581. 

An assignment takes effect from the day of its delivery and not 
from the day of its date. Dyer v. Rich, 1 Metealf (Mass.), 180. 

44 Where an assignment of an interest in a patent is made upon a 
condition subsequent, and not precedent, to the vesting of the inter- 
est, the question whether the defeasance has taken effect is for the 
courts, which have, and not for the Patent Office, which has not the 
means for its proper adjudication. An assignment of an interest in 
all patents previously obtained by the assignor, does not convey a 
subsequent invention of an improvement covered by a patent obtained 
before the assignment. An instrument purporting to be an assign- 



92 OPERATING INVENTIONS. 

ment of an interest in all letters patent to be subsequently obtained 
by the assignor embodying improvements on his prior inventions is 
not an actual transfer of the subsequent patent, but merely an agree- 
ment to transfer, enforceable only in a court of equity. Such an in- 
strument does not warrant the issue of the subsequent patents to the 
assignee as a sole or joint grantee, nor does it entitle him to appear 
as a party to the proceedings upon the subsequent application in the 
Patent Office. The clear meaning of a written instrument cannot be 
changed in the Patent Office by parol proof that the parties intended 
something else. An interest in an invention cannot be assigned by 
parol so as to entitle the assignee to appear in the Patent Office and 
assert the right to become a joint patentee, or to conduct the appli- 
cation in place of the inventor. Parties have no right, by contract, 
falsely to concede priority of invention; such a concession confers 
upon the party in whose favor it is made no right to demand a pat- 
ent as the first and original inventor, whatever rights it may confer 
on him as an equitable assignee; it is still the duty of the Patent 
Office to grant the patent to the first and original inventor, or to his 
assignee, and not to the party who, in defiance of the facts, is con- 
ceded to be the first and original inventor. A concession of priority, 
which is virtually a contract, cannot include an assignee, who, al- 
though only entitled to a transfer of the patent after its issue, has, 
coupled with the interest, a power of attorney from the inventor; but 
such assignee may be permitted to introduce and examine witnesses, 
and to interrogate witnesses introduced by the parties, on the ques- 
tion of priority of invention, and also to submit arguments on that 
question. Hammond v. Pratt, 16 O. G., 1235. 

Where certain terms are used in a grant which have well-known 
general meaning, then, in the interpretation of such grant, such well- 
known general meanings must be given to the terms. * * * * 
But in giving an interpretation to a particular clause of a deed (or 
assignment) we must look to every part of it in order to ascertain 
whether such interpretation is the true one. Day v. Cary, I Fish., 
P. C, 424. 

Where an invention was misnamed in a conveyance, and where it, 
on its face, furnished means for correcting the mistake, and for iden- 
tifying the thing about which the parties intended to contract, held 
that it was sufficient to pass the title to the invention patented. But 
if it were otherwise, the deed was not a nullity — it might be reformed 
in a court of equity. Harmon v. Bird, 22 Wend., 112. 

Inventions secured by letters patent are property in the holder of 
the patent, and as such are as much entitled to protection as any other 



INFRINGEMENTS. 93 

property consisting of a franchise, during the term for which the 
franchise or the exclusive right is granted. Such a holder may sell, 
assign, lease, or give away the property; or enter into any arrange- 
ment or agreement respecting the same; not enlarging the right 
granted, as the same might make with any other personal property. 
Authorities to support these propositions are not necessary as the 
statement of them is quite sufficient to secure in their behalf universal 
assent. Star Salt Caster Co. v, Crossman, 3 B. & A., 281. 

See Undivided Interests, page 65; Grants, page 82; Licenses, page 
85; Employer and Employe, page 114; Priority of Inventions, page 
28, and 

PARTNERSHIP. 

A joint interest in the patent did not make the parties partners 
[see Undivided Interests, page 65] and some agreement, therefore, 
became necessary to enable them to work the invention at their joint 
expense, and for their joint benefit. (Hindm., on Patents, 236.) If 
such an agreement be made they may become partners in the busi- 
ness of manufacturing and vending the patented article, subject to 
the rules of law governing parties standing in that relation to each 
other, except as those rules may be modified and limited by the arti- 
cles of partnership. Parkhurst v. Kinsman, 1 Blatch., 488. 

In the absence of an agreement the inventions of the member of 
a firm, if they are brought out and perfected by using the tools, time 
and money of the firm, with the consent of the inventor — a member 
of the firm — and if the invention was applied in the business of the 
firm, the rule applicable to employer and employe will apply 
with reference to the interest of the firm in such inventions. If ma- 
chines so manufactured are the property of the firm at the time of disso- 
lution, each member to the extent of his interest, has a right in them 
as his interests may appear. Wade v. Metcalf, 16 Fed. Rep., 130. 

See Employer and Employe, page 114; Undivided Interests, page 
65. 



INFRINGEMENTS. 



According to the patent law if a machine involves substantial 
identity with the one patented, it is an infringement. If the inven- 
tion of a patentee be a machine it is infringed by a machine which 
incorporates, in its structure and operation, the substance of the 
invention, that is an arrangement which performs the same service, 



94 INFRINGEMENTS. 

or produces the same effect in the same way, or substantially the 
same way. * * * * One machine is the same in substance as 
another, if the principle be the same in both, although the forms may 
be different. (Boville v. Moore, Dav., P. C, 361.) Sickles v. Bor- 
den, 3 Blatch., 535. 

On the question of infringement the burden of proof is upon the 
plaintiffs to show to the satisfaction of a jury that the machine in- 
fringes some one or all the claims of his patent. In determining the 
question of infringement a jury is no#to judge about similarity or 
differences by the names of things, but are to look to the machine or 
their several devices or elements, in the light of what they do, or 
what office or function they perform, and how they perform it; and to 
find that a thing is substantially the same as another, if it performs 
substantially the same function or office in the same way to attain the 
same result; and that things are substantially different when they 
perform different duties, or in a different way, or produce a different 
result. For the same reason a jury is not to judge about similarites 
or differences merely because things are apparently the same, or dif- 
ferent, apparently, in shape or form; but the true test of similarity or 
difference, in making the comparison, is the same in regard to shape 
or form as in regard to names; and in both cases a jury must look at 
the mode of operation, or the ways the parts work, and at the result 
as well as the means by which the result is attained. A jury is to 
inquire about and consider more particularly those portions of a 
given part of a machine which really do the work, so as not to attach 
too much importance to the other portions of the same part which are 
only used as a convenient method of constructing the entire part. 
The jury will also regard the substantial equivalent of a thing as 
being the same as the thing itself, so that, if two machines do the 
same work in substantially the same way and accomplish substantially 
the same result, they are the same; and so, if parts of two machines 
do the same work in substantially the same way and accomplish sub- 
stantially the same result, those parts are the same, although they 
may differ in name, form, or shape; but in both cases if the two 
things perform different work, or in a way substantially different, or 
do not accomplish substantially the same result, then they are sub 
stantially different. Slight differences in degree cannot be regarded 
as a weight in determining a question of substantial similarity, or 
substantial difference. One thing may be a little longer or a little 
shorter than the other, or may work a little better or a little wcrse, 
and yet the two may be substantially the same. Cahoon v. Ring, 1 
Cliff, 592. 



INFRINGEMENTS. 95 

The doctrine is simply this, as stated in the opinion of the Supreme 
Court, that in order to make out the fact of infringement there must 
appear to have been a substantial identity; that the parts of the 
machine which are claimed to be an infringement of the patented 
machine must appear to the satisfaction of the jury to be substantially 
the same; that is, that the same result must have been produced by 
substantially the same principle or mode of operation. Blanchard v. 
Putnam, 2 Bond, 84. 

Where the invention embraces an entire machine, as a car for a 
railway, or a sewing machine, * * * * any person is an infringer 
who without license makes or uses any portion of the machine. Where 
the invention embraces one or more of the elements of a machine, but 
not the entire machine, as the coulter of a plough, or the divider of the 
reaping machine * * * * any person may make, use, or vend 
all other parts of the machine or implement, and he may employ 
a coulter or a divider on the machine mentioned provided it be 
substantially different from that embraced in the patent. Another 
class of machines are those which embrace both a new element, 
and a new combination of elements, previously used and well 
known. The propeity in the patent in such a case consists in the new 
element, and in the new combination. No one can lawfully make, 
use, or vend a machine containing such new element or such new 
combination. They may make, vend, or use the machine without 
the patented improvements, if it is capable of such; but they cannot 
use either of these improvements without making themselves liable as 
infringers. A fourth class of machines * * * * are those where 
all the elements of the machine are old, and where the invention con- 
sists in the new combination of these elements whereby a new and 
useful result is obtained. Most of the modern machines are of this 
(fourth) class, and many of them are of great utility and value. But 
in this class the invention consists solely in the new combination; and 
the rule is that the property of the inventor, if duly secured by letters 
patent, is in all cases exactly commensurate with his invention. Such 
an invention, however, is an improvement upon an old machine and 
consequently the patentee cannot treat another as an infringer who 
has also improved the original machine by the use of a substantially 
different combination, although the machine may produce the same 
result. But every inventor is entitled to the full benefit of his inven- 
tion as described and secured in his patent, and any one charged with 
infringing the same cannot successfully defend himself against the 
charge merely because the machine he makes, uses, or vends, differs 
from that of the complainant's in any respect which does not render 



g6 INFRINGEMENTS. 

the machine so made, used, or vended, substantially different from 
the patented machine. Union Sugar Refinery v. Matthieson & Co., 
3 Cliff., 639 (Appendix). 

A patent for a combination is infringed by the use of a similar 
combination, although one of the elements is omitted and another sub- 
stituted for it, unless the substituted device is a new one, or performs 
a function essentially different, or was not known at the date of the 
patent as a proper substitute for the one omitted. Welling v. Rubber 
Harness Co., 7 O. G., 606; Webster v. New Brunswick Carpet Co., 
5O. C522. 

A patent for a combination, where another part is patented as new, 
is not infringed by one who uses one, or some, but not all, of the 
parts. Sarven v. Hall, 9 Blatch., 524; 2 Otto, 428. 

It is a settled rule of law that where a patent is for a combination of 
known parts, it is not infringed by the use of any number of the parts 
less than the whole; for the patent in every such case is for that iden- 
tical combination and for nothing else, and a combination of any less 
number of parts is a different thing. This principle has been so often 
reiterated that it is elementary. There is, however, another class of 
combinations where some of the parts are new and others old, and 
where the new parts are claimed as inventions. If the combination is 
of this character the appropriation of the part which is new is an in- 
fringement (Prouty v, Ruggles, 16 Pet., 336; Lee v. Blandy, 2 Fish., 
P. C, 89; Latta v. Shawk, 1 Fish., P. C, 465; Gould v. Rees, 15 
Wall., 187; Sharp v. Tift, 18 Blatch., 132; Vance v. Campbell, I 
Black, 427; Gills v. Wells, 22 Wall, 1; Burdett v. Estey, 16 Blatch., 
105; Sanford v. Merrimac Hat Co., 4 Cliff., 404; Fullers. Yentzer, 
94 U. S., 288; Moody v, Fiske, 2 Mason, 112.) Rowell v. Lindsay, 
10 Biss., 217. 

The use of a combination, with something in addition, is an in- 
fringement. Fosters. Moore, 1 Curt., 279. 

Patentees seeking redress for the infringement of their patents must 
allege and prove that they are the original and first inventors of the 
alleged improvement, and that the same has been infringed by the 
party against whom the suit is brought. In the first place the burden 
to establish both those allegations is upon the party instituting the 
suit; but the law is well settled that the patent in suit if introduced 
in evidence affords to the moving party a prima facie presumption 
that the first allegation is proved, the effect of which is to shift the 
burden of proving the defense upon the defending party. Blanchard 
v. Putnam, 8 Wall., 42; Seymour v. Osborne, 11 Ibid., 538. Infringe- 



INFRINGEMENTS. 97 

merit being denied the burden of proof is upon the complainant to 
establish the charge. Bates v. Coe, 8 Otto, 31. 

There cannot be a patent for a principle; nor for the application 
of a principle; nor for an effect. Two persons may use the same 
principle, and produce the same effect by different means without in- 
terference or infringement, and each would be entitled to a patent for 
his own invention. Bain v. Morse, 6 Western L. J., 372. 

A patentee is bound to disclose in his specifications the best method 
of working his machine known to him at the time of his application. 
An infringement will not have taken place unless the invention can 
be practiced completely by following the specifications. An in- 
fringement is a copy made after, and agreeing with the principle laid 
down in the patent; and if the patent does not fully describe every- 
thing that is essential to the making of the thing patented, there will- 
be no infringement by the fresh invention of a process which the 
patentee has withheld from the public. Page v. Ferry, 1 Fish., P. C.^ 
298. 

To constitute infringement, there must be, first, similarity of de- 
sign; second, substantial identity of purpose or result. Similarity of 
design being established, an infringement occurs if a result incident 
to the construction of the device is the same as that of the complain- 
ant, even though the primary purpose of the construction is for a dif- 
ferent object. Henderson v. Cleveland Co- Operative Stove Co., 12' 
O. G., 4; see Converse v. Cannon, 2 Wood, 7; Wintermute v. Red- 
ington, 1 Fish., P. C, 239. The right of the inventor does not de- 
pend upon the question whether the machine is more or less perfect,, 
or whether slight modifications in the arrangement of the machinery, 
or in the finish of the parts composing it, may or may not better 
accomplish the end sought to be attained; but upon the question 
whether the machinery constructed as described in the patent will or 
will not accomplish the end practically and usefully in the way pointed 
out. If it will, the inventor is entitled to the protection which the 
government has granted him, and any one using the principle thus 
embodied is guilty of an infringement, however he may have per- 
fected the machinery by superior skill in the mechanical arrange- 
ment and construction of the parts. Such perfecting is but the skill 
of the mechanic, not the genius of the inventor. Parkhurst v. Kins- 
man, I Blatch., 488. 

In some cases the letters patent include only the particular form 
described and claimed, not for the reason that the patentee has de- 
scribed and claimed that form only, but because the invention con- 
sists in form only, and only in that form can be embodied, so that 



98 INFRINGEMENTS. 

when the form is not copied the invention is not infringed. Winans 
v. Denmead, 15 How., 343; Murphy v. Eastham, 1 Holmes, 113. 

The structural difference in form and size is not important in de- 
termining the question of infringement if the same work is done by 
substantially the same means. Sewing Machine Co. v. Frame, 24 
Fed. Rep., 596. 

A mere change of form, the * * * * adoption cf some 
equivalent, suggested by mere mechanical skill — will not prevent an 
infringement. It would be otherwise if the change were one of sub- 
stance, and requiring exercise of inventive power. Case v. Brown, 
2 Fish., P. C, 268; Ibid., 2 Wall,, 320. 

Except where form is the essence of the invention, it has but little 
weight in determining the question of infringement. Machine Co. 
v. Murphy, 7 Otto, 120. 

Substantial identity is that which comprehends the application of 
the principle of the invention. If a party adopts a different mode of 
carrying the same principle into effect, and the principle admits of 
different forms, there is an identity of principle though not of mode 
(Page v. Ferry, I Fish., P. C, 298), and it makes no matter what 
additions to, or modifications of, a patentee's invention a defendant 
may have made; if he has taken what belongs to the patentee, he 
has infringed, although with his improvement the original machine 
or device may be much more useful. (Howe v. Morton, 1 Fish., 
P. C, 586.) All modes, however changed in form, but which act on 
the same principle and effect the same end, are within the patent; 
otherwise a patent might be avoided by any one who possessed ordi- 
nary mechanical skill. McComb v. Brodie, 1 Wood, 153. 

A patent for several distinct improvements which are clearly spec- 
ified is infringed by the use of one of the improvements. Moody v. 
Fiske, 2 Mason, 112. 

The use of a part of a patent covering an apparatus is an infringe- 
ment, although the other part is not used. Matthews v. Spangen- 
berg, 15 Fed. Rep., 813. 

Where two machines are for one purpose, covered by one patent, 
the patent is infringed by the use of either machine. Wyeth v. Stone, 
I Story, 273. 

There can be no question that there may be a claim for two inven- 
tions in the same patent if they both relate to the same machine or 
structure, and an action can be sustained for the infringement of 
either one or the other of these separate inventions when claimed as 
Separate and distinct in their character. (Lee v. Blandy, 2 Fish., P. 
C, 92; Electric Telegraph Co., v. Brett & Little, 4 E. Law and Equity 



INFRINGEMENTS. 99 

Reports, 347; Norman on Pats., 108, 109.) McComb, et al., v. 
Brodie, 1 Wood, 153. 

The use merely for experiment, and not with a view to profit, and 
when there has been no profit and no sale, will not make a party liable 
for infringement because a patentee would not be injured by it, but 
where * * * * it is done as a matter of business, where the pro- 
duct of that experiment has been thrown into the market to compete 
with the products of the patentee, although it may be called an ex- 
periment, yet if it is a matter of business, and thrown into the market 
for the purpose of being sold, and is sold, that will be such a use as 
will make a party liable to an infringement. Poppenhusen z/. New 
York Gutta Percha Co., 2 Fish., P. C, 62. 

The general principle is well settled that the making and selling 
of the separate materials for a patented combination is not an 
infringement of the rights of the inventor. Prouty v. Ruggles, 16 
Pet., 336; Byane v. Farr, 1 Curtis, C. C, 260; Fosters. Moore, Ibid., 
279; Vance v. Campbell, 1 Black, 427; Eanes v. Godfrey, I Wall., 
78, and numerous subsequent decisions settle that point. True, 
there is an obvious exception to this rule. If two or more persons 
conspire, one to make one part of a patented combination, and another 
another part, with the intention that the parts should be afterwards 
put together — this is an infringement. But in order to render one 
who makes and sells parts of a patented combination liable for in- 
fringement, the parts manufactured must be useless in any other 
machine, and they must be sold and manufactured with the under- 
standing or intention that the remaining parts are to be supplied by 
another, and the whole then combined for use. Such is the doctrine 
of the leading case of Wallace v. Holmes, 9 Blatch., 65, which was 
the case of a lamp burner, wholly useless unless combined with the 
glass chimney intended to be used with it. Millner v. Schofield, 4 
Hughes, 258. 

The conditions of a license must be performed or there will be no 
right to use the patented machine, and if the conditions are not per- 
formed the use will be an infringement. Where there is no pretence 
of right under a license because of non-performance of its conditions, 
the case will be decided as though no license had ever been granted. 
Brooks & Morris v. Stolley, 3 McL., 523. 

Although a United States patent gives no protection in the sale of 
machines in foreign countries, it gives protection in the United States 
for making machines in the United States to be sold abroad. Ketchum 
Harvester Co. v. Johnson Harvester Co., 19 Blatch., 367. 

See Joinder of Inventions, page 34; Combinations, page 37; 



IOO INFRINGERS. 

Equivalents, page 40; Defeating Patents, page 43; Identity, page 102; 
licenses, page 85; Substantially, etc., page 39, and 



INFRINGERS. 

Where the complainant is first in the field of an invention the de- 
fendant infringes if he follows the complainant's leading idea as set 
forth in his patent. Hoe v. Cole, 13 O. G., 500. 

If the complainant be the original inventor of the divider, he will 
have a right to treat as infringers all who make dividers operating 
upon the same principle, and performing the same functions by anal- 
ogous means, or equivalent combinations. McCormick v, Talcott, 
20 How., 405; Myers v. Duker, I B. & A., 535. 

Where an invention is described as consisting of the combination 
of two elements, and one of them proves defective, or is not used by 
the infringer, he will, nevertheless, be restrained from using the 
remaining one, if the patentee has included it in a separate claim. 
Henderson v. Cleveland Co-Operative Stove Co., 12 O. G., 4. 

If a patentee has invented a combination of two or more old things 
so as to produce a new and useful result, then he has a right to treat 
as infringers all who have used his invention in order to accomplish 
something more, or better, when, without the aid of such invention it 
could not be effected. Sayles v. Chicago & Northwestern R. R. Co., 
3 Biss., 52. 

The defendants, though they manufactured only one part of the 
combination covered in the patent, are, nevertheless, infringers, if it 
appears that such parts were made and sold for the express use to 
which they were put. Richardson v. Noyes, 10 O. G., 507. 

The manufacturing and selling of elements of a combination which 
cannot be used in any other way is prima facie evidence of an intent 
to infringe the patent. Schneider v. Pountney, 21 Fed. Rep., 399. 

It is well settled that any material changes, or the substitution of 
mechanical equivalents, will not relieve a party from the charge of 
infringement. Brighton v. Wilson, 18 Fed. Rep., 378. 

The original inventor of a machine will have a right to treat as 
infringers all who make machines operating on the same principle, 
and performing the same functions by analogous means, or equivalent 
combinations, even though the infringing machines may be an im- 
provement on the original, and patentable as such. McCormick v. 
Talcott, 20 How., 405. 

If all the defendants have participated in the infringement they 



INFRINGERS. TOI 

are all liable, though the individuals were acting simply as officers of 
the company in doing it. * * * * A man cannot retreat behind 
a corporation and escape liability for a tort in which he actively par- 
ticipates. National Car Brake Shoe Co. v. Terry Car & Manufactur- 
ing Co., 19 Fed. Rep., 514. 

A wrong doer cannot set up that he is doing wrong on account of 
a third person as a bar to his own responsibility. The principal also 
may be liable if the injured party elects to look to him; but the per- 
son who is actually doing wrong cannot escape liability. The fact of 
the defendant selling the article infringing the patent, as agent, and 
having no interest in it, or in its sale, does not release him from the 
consequences of infringement. Maltby v. Angus, 14 Blatch., 53. 

If it is shown that a party has formally been engaged in infringing 
a patent, and ceased doing so at the commencement of the action, 
and did not propose to re-engage in the business, it is a sufficient 
answer to an application for an injunction made to prevent a renewal 
of the infringement. Potters. Crowell, 1 Abbott, 89. 

The defendant seeks to defend himself against an action for an 
alleged infringement, both as to the making and using, by showing that 
he has done so by authority of the company employing him. But the 
unlicensed manufacture and use are mere torts * * * * for 
which an agent is directly and personally answerable. Story on 
Agency, Sees. 311, 312, and cases there cited. Perkins v. Smith, I 
Wils., 328; Stephens v. Elwell, 4 Maule & S., 259. These cases are 
selected because the acts for which the agents are personally charged 
were simply torts without fraud. Cases bearing specially upon the 
defendant's case as a director of the company are: (Salmon v. Rich- 
ardson, 30 Conn., 360; 1 Chitty on Plead., 81 to 83; Bell v. Josselyn, 
3 Gray, 311* 2 Greenl. Ev., Sec. 68; Commonwealth v. Ohio, etc.. 
Railroad, I Grant, 329; Calhoun v. Richardson, 30 Conn., 210.) [See 
also a similar opinion — Bryce v. Dorr, 3 McL., 582.] Lightner v. 
Brooks, 2 Cliff., 287. 

There can be no question that if the contractor, in the fulfillment 
of his obligation violates the patent right of another, he is answerable 
for the infringement. He cannot defend himself against the claim of 
the patentee by asserting that he committed the wrong under a con- 
tract with the County Commissioners. It was his own folly to have 
imposed upon himself such an obligation, and he alone is responsible 
for the injury which another may sustain as the consequences. If he 
had foreknowledge that the work he had bound himself to perform 
involved an infringement of a patent right, it was his business to have 
procured a license for the use of the improvement: and failing to do 



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VALIDITY OF PATENTS. IO3 

alents or contrivances, and if so there would be a substantial identity 
Page v. Ferry, 1 Fish., P. C. 298. 

'Substantial identity" is where the parts of two machines are sub- 
stantially the same; that is, the same result must be produced by 
substantially the same principle or mode of operation. If there is a 
difference in this respect then it goes to establish the want of identity 
between the structures. Blanchard v. Putnam, 2 Bond, 84. 

Substantial identity is a question of fact which the jury must de- 
termine. Many v. Jagger, 1 Blatch., 372 

Characteristic resemblance is the fairest test of substantial identity. 
Union Paper Collar Co. v. Henry J. White, 7 O. G., 877. 

The law applicable to identity is so well settled and understood 
that it is useless to extend this opinion (of the Court) by the formal 
citation of authorities. It is a conceded principle that a patent for a 
mechanical structure, or a process to effect a specific purpose, does 
not embrace every possible means of effecting the same result. The 
true inquiry is whether the machine or process charged to be an in- 
vasion of an exclusive right of a patentee embodies the idea or con- 
ception of the original inventor, and accomplishes it by substantially 
the same means. The patentee is protected from the use of all plans 
or devices, which, however, seemingly different from the patented in- 
vention, are the same in principle and operation. Whitney v. Mowry, 
2 Bond, 45. 

See Infringements, page 93; Defeating Patents, page 43. 



VALIDITY OF PATENTS. 

The patent itself is prima facie evidence of validity and original 
inventorship. South v. Goodyear Dental Vul. Co., 93 U. S., 486; 
Rich v. Lippincott, 2 Fish., P. C, 1. 

The patent is evidence of its own validity, and hence the burden 
of proof to invalidate it rests upon the defendants. Every reasonable 
doubt ought to be resolved against them. Miller v. Force, 9 Fed. 
Rep., 603. 

It is not material to the validity of a patent if it has become use- 
less since the patent was issued, by the discovery of some other 
method which dispenses with it. If the invention was useful when 
the patent was issued, the patent is valid. Poppenhusen v. New 
York Gutta Percha Comb Co., 2 Fish., P. C, 62. 



104 VOID PATENTS. 

In all doubtful cases involving the validity of a patent, the fact 
that a mode described in the patent has gone into extensive use has, 
and often will, induce the courts to decide in favor of the patent. 
But, while this is so, courts ought not, merely because of such use, to 
sustain a patent. The rights of the public are to be protected as well 
as those of individuals, and a monopoly should not be allowed unless 
the right to it is clearly shown. Wilson Packing Co. v. Chicago 
Packing & Provision Co., io Biss., 559. 

Where defendants deny infringement and set up the right to man- 
ufacture the article patented sufficiently to put the plaintiff to proof 
of the patent alleged in the bill, that proof may be met by any proof 
on the part of the defendants which will tend to show there was no valid 
patent. Eagle ton Mfg. Co. v. West, Bradley & Cary Mfg. Co., 18 
Blatch., 218. 

Where the validity of a patent has been sustained by judgments of 
other Circuit Courts, the respect due to these judgments, and the 
importance of consistency and uniformity of decisions in courts of co- 
ordinate jurisdiction, where the same subject matter is involved, will 
cause a court to decide in accordance with such judgments. Amer- 
ican Ballast Log Co. v. Cotter, 11 Fed. Rep., 728. 

Two patents of a kind may both be valid where the second is an 
improvement upon the first, in which event, if the second includes 
the first, neither can lawfully use that of the other without the other's 
consent. Plainly the second patent could not be used without the 
consent of the owner of the first, nor could the owner of the first use 
the second without the consent of the owner, as the patent contains 
an invention which the owner of the first patent never made. Wood- 
worth v. Rogers, 3 W & M., 120; Star Salt Caster Co. v. Crossman, 
3 B. & A., 281. 

It is not necessary to the validity of a patent that the patentee 
should take the oath prescribed by law before the letters patent are 
granted. Dyer v. Rich, 1 Metcalf (Mass.), 180. 

See Defeating Patents, page 43; Infringements, page 93 and 

VOID PATENTS. 

If the patent is broader than the invention, if not sufficiently 
descriptive, taken in connection with the specifications, etc., the 
plaintiff cannot recover. But though the patent is too broad in its 
general terms it will be limited by a disclaimer. Whitney v. Em- 
mett, 1 Bald., 303. 

If there be a false suggestion in any of the several material facts 



VOID PATENTS. 105 

set forth in a specification the patent is invalid. Delano v. Scott, 
Gilp., 489. 

It is necessary to the validity of a patent, that the specification 
should describe in what the improvement consists; so decided by Mr. 
Justice Story in the cases referred to in the appendix to 3 Wheaton's 
Reports, and in the cases of Boulton v. Bull; Boville v. Poor; McFar- 
lane v. Price; Harmer v. Playne and others. The reasons upon 
which this doctrine is founded are to guard the public against any 
unintentional infringement of the patent during its continuance, and 
to enable an artist to make the improvement by reference to some 
known and certain authority to be found among the records of the 
office of the Secretary of State after the patent has run out. * * * 
The full nature and extent of the improvement must be stated in fhe 
specifications, and the claims must be limited to the improvement, 
and not include the whole machine, as a patent which is broader than 
the invention is void. Evans v. Eaton, 7 Wheat., 355. 

When the claim expresses a combination of several elements, with- 
out particularly pointing out the special construction of one embody- 
ing the actual novelty and invention, and the general combination is 
old, the patent is broader than the actual invention, and is therefore 
invalid. Terry Clock Co. v. New Haven Clock Co., 17 O. G., 908 

Where an invention is so loosely and inaccurately described in the 
specifications that the Court cannot, without resorting to conjecture, 
gather what it is, then the patent is void; but if the Court can clearly 
see the nature and extent of the claim, however imperfectly and 
unartificially it may be expressed, the patent is good. Ames v. 
Howard, I Sumn., 482. See also Barrett v. Hall, 1 Mason, 447. 

Whether the thing claimed to be invented is sufficiently described, 
is a matter for the determination of the court or jury. In its nature 
it is a question of law for it depends upon the construction of a written 
instrument. If technical terms be used, peculiar to mechanics, in 
describing the invention, evidence may be heard in explanation of 
those terms, and in such case a jury may be necessary. If this point 
were ordinarily referable to the jury, the decisions on the same instru- 
ment would be as variable as the names of the parties. To produce 
uniformity of decisions the courts must give a construction to all 
written instruments. In this mode, by the application of known 
rules of construction, the specifications of a patent are construed and 
settled as regards the thing invented. Whether the description is so 
particular as to enable a mechanic to construct the machine is a 
question for the jury. But unless the thing claimed to be invented, is 
so described as to be known, in the language of the Statute, from every 



106 VOID PATENTS. 

other thing, the patent is void. And this must be determined by the 
Court. * * * * Where an improvement on a machine referred to 
the previous patent of the machine, as showing the part invented, it 
was held sufficient. Harmer v. Playne, n East., 101. It is not 
enough that the thing designed to be embraced by the patent should 
be made apparent on the trial by a comparison of the new with the 
old machine; Dixon v. Moyor (4 Wash., 68). The specifications 
must be complete. No defects can be obviated by extraneous evi- 
dence at the trial. Brooks v. Jenkins, 3 McL., 432. 

If with a fraudulent purpose of concealing the invention, or any- 
material part of it, a patentee omits, or erroneously describes any es- 
sential element, the patent is absolutely void. Whitney v. Mowry, 2 
Bond, 45. So, too, if an invention fails to produce the described re- 
sults the patent is void. O'Reilly v. Morse, 15 How., 62. 

The validity of the patent in this country does not at all depend 
upon the validity of a patent on the same invention in a foreign coun- 
try, but the duration of a patent may. Comely v. Marckwald, 17 
Fed. Rep., &$. See Foreign Patents, page 122, 

One invention may include within it many other inventions and 
the patents on each and all may be valid at the same time. This only 
consequence follows : That each inventor is precluded from using in- 
ventions made and patented prior to his own, except by license from 
the owners thereof. His invention and his patent are equally en- 
titled to protection from infringement as if they were independent from 
any connection with them. Cochrane v. Deener, 4 Otto, 780. 

The proceedings in the Patent Office upon the plaintiff's applica- 
tion for the patent are not admissable for the purpose of giving it a 
different construction. If the defendant claims that the patent is void 
for uncertainty it rests with him to establish the charge. The patent 
is not void for want of utility if the invention possesses it (utility) 
in any measure, however slight. Westlake v. Carter, 4 O. G., 636. 

An article made according to a known method may be better than 
other articles made in the same manner, on account of its superior 
mechanism. But this is no foundation of an exclusive right. And if 
a material not before used in the same structure be used, that gives 
no claim to a patent, though the article be more valuable than any 
other of the kind. * * •' « The material being in common use, 
and no other ingenuity or skill being necessary to construct the 
article than that of an ordinary mechanic acquainted with the busi- 
ness, the patent is void. Hotchkiss i\ Greenwood, 4 McL., 456. 

See Validity of Patents, page 103; Infringements, page 93; De- 
feating Patents, page 43. 



INJUNCTIONS. 107 



INJUNCTIONS. 

The several courts vested with jurisdiction of cases arising under 
the patent laws shall have power to grant injunctions according to the 
course and principles of Courts of Equity, to prevent the violation of 
any right secured by patent, on such terms as the Court may deem 
reasonable, and upon a decree being rendered in any such case for ail 
infringement, the complainant shall be entitled to recover, in addition 
to the profits to be accounted for by the defendant, the damages the. 
complainant has sustained thereby; and the Court shall assess the 
same, or cause the same to be assessed under its direction. And the 
Court shall have the same power to increase such damages, in its dis- 
cretion, as is given to increase the damages found by verdicts in 
actions in the nature of actions of trespass on the case. U. S. Revised 
Statutes, Sec. 4921. See Damages and Profits, page 112. 

This section will be found in the pamphlet of patent 
laws referred to on page 7, and printed therewith are 
references to many adjudicated cases under it. 

"The proof on the application for a preliminary injunction was to 
the effect that the complainant, the owner of this patent, had never 
used it, and never constructed a printing press with the Crowell de- 
vice. The argument is that the owner of this patent was a very large 
manufacturer of printing presses, but that he did not manufacture and 
keep the printing presses in stock, only made them to order; and that 
they have received no order as yet to make a press containing the Crow- 
ell device. The question therefore arises whether the Court will grant 
an injunction in favor of the owner of the patent who has not, after a 
reasonable time, put it into use, against another who is using it. I 
(the Court) think, under a patent which gives a patentee a monopoly, 
he is bound either to use the patent himself or allow others to use it 
on reasonable or equitable terms, and as I refused an injunction on 
the motion before the hearing, I shall refuse an injunction in the in- 
terlocutory decree, and allow the defendants to continue to use the 
patent on their giving bond, as they have heretofore." Hoe v. 
Knap, 27 Fed. Rep., 204. 

See Infringers, page 100; Infringements, page 93; Patent Applied 
For, page 44. 



108 JURISDICTION. 



JURISDICTION. 

The Circuit Courts shall have original jurisdiction as follows: 

Ninth. Of all suits at law or in equity arising under the patent 
or copyright laws of the United States. U. S. Revised Statutes, 
Sec. 629. 

The Supreme Court shall have appellate jurisdiction in the cases 
hereinafter specially provided for. * * * * U. S. Revised Stat- 
utes, Sec. 690. 

A writ of error may be allowed to review any final judgment at 
law, and an appeal shall be allowed from any final decree in equity 
hereinafter mentioned, without regard to the sum or value in dispute: 

First. Any final judgment at law, or final decree in equity or 
any Circuit Court, or of any District Court acting as a Circuit Court, 
or of the Supreme Court of the District of Columbia, or of any terri- 
tory, in any case touching patents — rights, or copyrights. U. S. 
Revised Statutes, Sec. 699. 

The jurisdiction vested in the Courts of the United States in the 
cases of proceedings hereinafter mentioned, shall be exclusive of the 
courts of the several States. 



Fifth. Of all cases arising under the patent — right, or copyright 
— laws of the United States. U. S. Revised Statutes, Sec. 711. 

Although in ordinary actions at common law brought in the United 
States Courts the Statutes of limitation of the State where the suit is 
brought may be pleaded in bar under the provisions of the judiciary 
act, such pleadings will not apply to an action for the infringement 
of a patent where the right of action is exclusively under the Consti- 
tution and Laws of the United States, and when the form of the rem- 
edy is prescribed by the Acts of Congress, and when the Circuit 
Courts are clothed by statute with exclusive jurisdiction over the 
whole matter. Anthony v. Carroll, 9 O. G,, 199. 

The statutes of foreign countries, as construed by their judicial 
departments, will be accepted as law by our courts when considered 
by them. Refrigerating Co. v. Gillett, et al., 20 Fed. Rep., 192. 

The Courts of the United States have their jurisdiction over con- 
troversies in patent matters by statute, and do not exercise it merely 
as ancillary to a court of law. Blank v. Manufacturing Co., 3 Wall., 
Jr , 196. The courts may render a final decree on a patent whose 



JURISDICTION. IO9 

validity is contested; without sending the parties to law to try their 
rights. Batten v. Silliman, Ibid., 124. 

It is undoubtedly true that the State Courts have no cognizance 
of actions in which the validity of letters patent are involved. 
The jurisdiction of the courts of the United States is- 
exclusive for such questions; where, however, the controversy 
does not turn upon letters patent, but upon the force and 
effect of some contract under them, or in reference to them, in which 
the question of their validity is not raised, it has long been held 
that the State Courts are the appropriate tribunals for the adjudica- 
tion, and that the Federal Courts cannot properly assert jurisdiction 
unless the residence or citizenship of the parties confer it. Thus, in 
the case of Wilson v. Sandford, et al., 10 How., 99, where a bill had 
been filed in the Circuit Court of the United States for the District of 
Louisiana to set aside a contract between the appellant and the 
appellee, by which the former had granted to the latter permission, 
to use, or vend to others to be used, one of Woodworth's planing ma- 
chines, and to obtain an injunction against the further use of the ma- 
chine on the ground that it was an infringement of his patent right. 
The jurisdiction of the Supreme Court on the appeal depended upon, 
the question whether the action arose " under any law of the United 
States granting or confirming to inventors the exclusive right to their 
inventions or discoveries." The opinion of the Court dismissing the 
appeal was delivered by Chief Justice Taney, in which he says; 
"The dispute in this case does not arise under any act of Congress; 
nor does the decision depend upon the construction of any law in. 
relation to patents. It arises out of the contract stated in the bill; 
and there is no Act of Congress providing or regulating contracts of 
this kind. The rights of the parties depend altogether upon common 
law and equity principles. The object of the bill is to have this con- 
tract set aside and declared to be forfeited; and the prayer is that, 
the appellant's reinvestiture of title to the license 'under the patent' 
granted to the appellees by reason of the forfeiture of the contract,, 
may be sanctioned by the Court, and for an injunction. But the in- 
junction he asked for is to be the consequence of the decree of the: 
Court sanctioning the forfeiture. He alleges no ground for an. 
injunction unless the contract is set aside. And if the case made in. 
the bill was a fit one for relief in equity, it is very clear that whether 
the contract ought to be declared forfeited or not in a Court of Chan- 
cery depended altogether upon the rules and principles of equity, 
and in no degree whatever upon any Act of Congress concerning pat- 
ent rights." And to the same effect, also, was the opinion of Mr.. 



110 JURISDICTION. 

Justice Nelson, in Goodyear^. Day, I Blatch., 565. The pleadings 
in suit * * * * present no issue in regard to the validity of the 
patent. The only question is as to the validity of certain transfers 
and assignments of interests in and under them, of which the abov 
cases being authority — the court (State) has jurisdiction. Consol- 
idated Fruit Jar Co. v. Whitney, 2 B. & A., 30. 

It can make no difference whether the payee of the note or the li- 
censor in the license brings the suit to enforce the note or the license, or 
whether the suit is brought by the maker of the note, or the licensor 
in the license to cancel the instrument. The State Court has juris- 
diction in either case to inquire collaterally into the validity of a pat- 
ent, * * * * but it cannot entertain jurisdiction of a contract 
suit to repeal a patent. Merserole v. Union Paper Collar Co., 
6 Blatch., 356. 

Where a person was a territorial assignee of a patent for a specified 
territory, the machine sold by him passed out of the monopoly; the 
royalty of the patentee had been paid, and the property sold passed 
from under the protection of the Patent Laws of the United States, 
and was subject, like other property, only to the operation of the laws 
of the State. (Bloomers. McQuewan, 14 How., 549; Wilson v. Rous- 
seau, 4 How., 646; Chaffee v. Boston Belting Co., 22 How., 217; 
Goodyear v. Beverly Rubber Co., 1 Cliff., 348). The same principle 
has been affirmed in this Court (U. S. Circuit) in the case of Adams 
v. Burk, reported in 1 Holmes, 40 ; 1 O. G., 282 ; 4 Fish, P. C, 392. 
Hawley v. Mitchell, I Holmes, 42. See also Patterson v. Kentucky, 
97 U. S., 501 (7 Otto). 

"Any person who may take any obligation in writing for which 
any patent right, or right claimed by him or her to be a patent right, 
shall form the whole or part of the consideration, shall, before it is 
signed by the maker or makers, insert in the body of said written ob- 
ligation, above the signature, of said maker or makers, in legible 
writing or print, the words 'given for a patent right/ " Revised 
Statutes of the State of Indiana, Sec. 6055 (1881). "This (the above) 
law is, I (the Court) think, clearly unconstitutional. It was so held in 
respect to similar laws, in Helm v. First Nat. Bank, 43 Ind., 167; fol- 
lowing the decision in ex parte Robinson (infra). See also Grover & 
Baker S. M. Co. v. Butler, 53 Ind., 454 ; Fry v. State, 63 Ind., 552 ; 
Toledo Agr. Works v. Works, 70 Ind., 253. It is claimed that these 
cases are inconsistent with the opinion of the Supreme Court of the 
United States in Patterson v. Kentucky, 97 U. S., 501 (supra). But 
that case has reference to local restrictions upon the sale or use of 
tangible property; and notwithstanding the property was manufac- 



JURISDICTION. Ill 

tured or produced under letters patent, it was held that the enforce- 
ment of the statute of the State interfered with no right conferred by 
the letters patent. The case manifestly has no application here; the 
notes in suit having been given, not for tangible property, but for a 
right in letters patent, in respect to which the States can impose no 
restrictions. Castles. Hutchinson, 25 Fed. Rep., 394. 

Opinion of Davis, J. * * * * "This is an attempt on the 
part of the Legislature (of the State of Indiana) to direct the manner 
in which patent rights shall be sold in the State ; to proscribe their 
sale altogether if these directions are not complied with, and to throw 
burdens on the owners of this species of property which Congress 
has not seen fit to impose upon them. * * * * It is clear that 
this kind of legislation is unauthorized. To Congress is given by the 
Constitution the power "to promote the progress of science and useful 
arts by securing, for limited times, to authors and inventors, the ex- 
clusive rights of their respective writings and discoveries". This 
power has been exercised by Congress who has directed the manner 
in which patents shall be obtained, and when obtained how they shall 
be assigned and sold. The property in inventions exists by virtue of 
the laws of Congress and no State has a right to interfere with its en- 
joyment, or to annex conditions to the grant. If the patentee com- 
plies with the law of Congress on this subject he has a right to go into 
the open market anywhere within the United States and sell his prop- 
erty. If this were not so, it is easy to see that a State could impose 
terms which would result in a prohibition of the sale of this species of 
property within its borders, and in this way nullify the laws of Congress, 
which regulate its transfer and destroys the power conferred upon 
Congress by the Constitution. The law in question attempts to pun- 
ish by fine and imprisonment a patentee, for doing with property 
what the National Legislature has authorized him to do, and is there- 
fore void. Ex parte Robinson, 2 Biss. 309; Ibid., 4 Fish. P. C, 186. 

The right conferred by the patent laws of the United States to in- 
ventors to sell their inventions and discoveries does not take the 
tangible property, in which the invention or discovery may be exhib- 
ited or carried into effect from the operation of the tax and license 
laws of the State, * * * * and it is only the right to the inven- 
tion or discovery — the incorporeal right — which the State cannot 
interfere with. Congress never intended that the patent laws should 
displace the police powers of the State, meaning by that term those 
powers by which the health, good order, peace, and general welfare 
of the community are promoted. Whatever rights are secured to in- 
ventors must be enjoyed in subordination to this general authority of 



112 DAMAGES AND PROFITS. 

the State over all property within its limits. These views find sup- 
port in the language of this court (Superior) in Pattersons. Kentucky, 
97 U. S., 501. (Cited supra) Webber v. Virginia, 13 Otto, 344. 
See Insolvency, page 114; Patent Applied For, page 44. 



DAMAGES AND PROFITS. 

The profits of the manufacture, sale or use of anything but the 
patented improvement in the machine cannot be recovered. Schill- 
inger v. Gunther, 15 Blatch., 303. 

In cases where a patentee avails himself of his invention and of 
his exclusive right of his enjoyment to its profits, by putting it into 
market and selling rights under it, as is most usually the case with 
inventors — that is, rights for States or counties or smaller districts, 
or portions of the invention itself — in such cases the customary 
charge for the right to use the patented invention is the measure of 
the damages which the patentee is entitled to recover in case of an 
infringement, with interest on the same from the time of the infringe- 
ment. In other words, if he is accustomed to sell a single right for 
the manufacture of a machine for 20, 30, 40, 50, or 100 dollars, and if 
that is his usual price for the right throughout the country, that fee, 
with interest from the time of the particular infringement, is the 
measure of damages for each infringement. But if the patentee 
comes to the conclusion not to vend to others his rights under the 
patent, and not to avail himself of the proceeds of sales of his mere pat- 
ent right, but to use the patented invention exclusively himself, and 
to famish the products to the community himself out of his own man- 
ufacture or establishment — in such cases a different measure of dam- 
ages is to be adopted by the jury. And that is this: If the patent 
is for a machine, an entire machine, the patentee is entitled, as dam- 
ages, in case of an infringement, to the profits he could have made in 
constructing and vending his machine, over and above the mere 
profits arising out of its manufacture. By that, we mean the mere 
profits of its mechanical construction, and not the profits that grow 
out of the exclusive right to manufacture the invention under the 
patent. The latter belong to the patentee, while the former, the 
mere mechanical profits, are excluded from the damages. And if the 
case is one of importance, on a machine, then he is entitled, as a 
measure of damages, to all the advantages of the use of his patented 



DAMAGES AND PROFITS. II3 

improvement, excluding the profits of the manufacture, and excluding 
also the value, if any, of the use of the old machine. Now, so far as 
respects the benefits and advantages that a patentee would derive 
from an improvement on a machine * * * that would depend 
very much, if not altogether, upon the usefulness of the machine 
with that improvement, compared with its usefulness without that im- 
provement. * * * If the machine stripped of * * * improve- 
ments would be a useless article in the market, and if no person would 
buy it unless those improvements were annexed, then its value, so far 
as its utility is concerned, depends upon those improvements; be- 
cause they give it vitality and usefulness in the eye of the business 
community. Hence it is proper to make this discrimination in can- 
vassing the facts bearing upon the proper measure of damages. 
McCormick v. Seymour, 3 Blatch., 209. 

The profits are not all that an infringer made in the business in 
which he used the patented invention, but they are the worth of the 
advantages he obtained by such use — or, in other words, they are the 
fruits of that advantage. (Mowry v. Whitney, 14 Wall., 651.) Thus, 
where no profits actually resulted from the use by reason of the de- 
fective mechanism in combination with which the infringed device 
was employed; yet, as the loss was less than it would have been with 
the infringed device omitted, this benefit is equivalent to an equal 
gain, and was rightly estimated as a part of the profits for which the 
infringer was responsible. Ivers v. Conover, 11 O. G., nil. 

The general rule is that the plaintiff, when he has established a 
right to recover, is entitled to all the actual damages which he has 
sustained in consequence of the infringement of his patent, as contra- 
distinguished from exemplary, vindicative and punitive damages. 
* * * One mode of arriving at the actual damages is to ascer- 
tain the profits which the plaintiff derives from the machine which he 
manufactures and sells, and which have been made and sold by the 
defendant. * * * Another mode * * * is to ascertain the 
profits which the party infringing has derived from the use of the in- 
vention or the construction of the machine. Pitts v. Hall, 1 Fish., 
P. R.,45i. 

Do not overlook the fact that an established 
Royalty is held by the courts as being a proper 
measure of damages in infringement suits. See 
page 84. 

See Royalty, page 83; Licenses, page 85; Injunctions, page 107. 



114 EMPLOYER AND EMPLOYE. 

INSOLVENCY. 

" These incorporeal rights (copyrights and letters patent) do not 
exist in any particular State or district: they are co extensive with 
the United States. There is nothing in the Act of Congress, or in the 
nature of the rights themselves, to give them locality anywhere so as 
to subject them to the process of courts having jurisdiction, limited by 
the lines of States and Territories. Stevens v. Gladding, 17 How., 
4^ It * * * * Without such a conveyance as the statute of the 
United States contemplates, we (the Court) do not think the assignee 
acquires any legal title to any interest the debtor may have in any 
letters patent. To invest the assignee with the legal title the Court 
must compel a transfer in conformity with the requirements of the 
patent act. Stephens v. Cady, 14 How., 530.'' Ashcroft v. Wal- 
worth, 1 Holmes, 152; Gordon v. Anthony, 16 Blatch., 234. 

The provisions of the Bankrupt Law not only vested the title to 
patent rights which the bankrupt had, in the assignee, but all rights 
in equity and choses in action which would cover the whole. (U. S. 
Revised Statutes, Sec. 5046.) And these rights vested by operation 
of law in the assignee in bankruptcy at the time of the assignment. 
Prime v. Brandon Mfg. Co., 16 Blatch., 453. 

See Jurisdiction, page 108, and 

EMPLOYER AND EMPLOYE. 

A large majority of the inventions of the past have 
been made by employes. 

" The title and object of the Act of 1836 is to promote the progress 
of the useful arts, and patents are granted to inventors, not for their 
benefit simply, but for the purpose of benefiting the public by en- 
couraging inventors to make inventions which may be useful to the 
public when placed at their disposal; and to place upon the records 
of the Patent Office a description of those inventions so that, after the 
expiration of the terms limited by their patents, the public may have 
the full advantage of their genius and discoveries." Ransom v. Mayor 
of New York, I. Fish. P. C, 252. 

''Patentees as a class are public benefactors, and their rights should 
be protected. But the public has rights also. The rights of both 
should be upheld, and enforced by an equally firm hand, wherever 
they come under judicial consideration." Densmore v. Schofield, 12 
Otto, 375. 



EMPLOYER AND EMPLOYE. 115 

Many disputes have arisen and legal controversies 
resulted, by reason of claims made to the inventions of 
employes by employers. 

When the nature of the employment calls for inventions, 
as when a person is employed to develop an invention 
or to devise mechanical ways and means to accomplish 
a particular purpose or purposes, his inventions in the 
line of the employment do not belong to the employer 
when expressed in the form of a patent, as seems to be 
generally understood; but the implied license of a shop- 
right — unlimited — to sell anywhere and everywhere in 
the face of the patent when obtained, which the courts 
uniformly hold belongs to employers under such circum- 
stances greatly reduces the value of patents, and in some 
instances renders patents practically valueless to the em- 
ploye-inventor; as where an article has but a limited de- 
mand, or a demand only in the particular channel of trade 
in which an employer is well established. 

In the latter instance it will be a very difficult under- 
taking to enlist capital in an invention to manufacture 
and sell in direct competition with itself. True, such 
implied licenses are, as a rule, not assignable, and they 
are usually held to be "merely personal," but these facts, 
except in very exceptional cases, will not materially affect 
the given result. 

Another rule very properly applies where the line of 
the employment does not call for inventive skill, as where 
a man is employed to operate a machine or to do work 
by common methods and makes inventions in the line of 
his work, or otherwise, however valuable, his inventions 
are wholly his own in the absence of an agreement ex- 
pressed or implied, and none can be implied, as the "line 
of his employment" does not require inventive skill. 

In these cases care should be taken that the inventions 
are not developed and reduced to practice at the ex- 



Il6 EMPLOYER AND EMPLOYE. 

pense of the employers, as they may claim shop-rights 
in them, by reason thereof; or at least the right to use the 
devices in their shops. Against the latter claim you will 
probably have no successful defense, and your success in 
defending the former will depend so much upon direct 
and extraneous circumstances as to make the efforts very 
uncertain in their results. 

An employe anticipating the making of inventions, what- 
ever may be the nature of the employment, will recognize 
the importance of having an agreement in writing with his 
employer with reference to them, or at least a memoran- 
dum in writing of the agreement, signed by his employer. 

In the absence of a writing, whatever the verbal agree- 
ment may be, in case of a misunderstanding, an employer 
has the advantage of means, to prosecute or defend, 
which, as a rule, will force a compromise against the in- 
terests of an inventor. True, an inventor may shield 
himself under the wings of outside capital, but the wings 
will cost him so much of the invention as to make it a 
serious question with him which course he had better 
pursue; as a rule he will be the most fortunate to pursue 
the course leading to the speediest termination, as either 
will likely terminate his interests. 

It is of almost equal importance to employers that 
written agreements be made with reference to the inven- 
tions of their employes, who are often "prone to wander" 
to other capital, and thus make justice very expensive. 

If you ignore these facts and lose, in consequence, it 
will not be because my duty has been neglected. I have 
given you the "danger" signal and it remains for you to 
apply the brakes. Don't rush madly on in the hope that 
you may be an exception and "cross the bridge." The 
following decisions are cited in reference to these matters: 

The mere fact of employment gives to the employer no title in 
letters patent of the inventions made by the workman while in his 



EMPLOYER AND EMPLOYE. 117 

service. A workman engaged to make improvements in the special 
machinery * * * * of which his employer is to have the fullest 
benefits forfeits no title to his letters patent for his inventions which 
are of general applicability, and not confined to the specialties of 
construction in the line in which he is employed. The terms of the 
particular contract may operate as a license to the employer to use 
machinery invented by the workman, and put in use during his em- 
ployment, but it would not, of itself, confer any legal title to the in- 
vention, or to letters patent protecting it, hence — where the employer 
rested his suit for infringement on a legal title obtained under such 
circumstances, the court ruled that the equitable title of the workman 
under which the defendants justified was superior, and that there was 
no infringement. In a court of equity, a party holding an equitable title 
cannot be ousted of his equitable rights by the holder of the legal 
title, who, in such case, stands as trustee for the party beneficially 
interested. Whiting v. Graves, 13 O. G., 455. 

If a person employed in the manufactory of another, while receiv- 
ing wages, makes experiments at the expense and in the manufactory 
of his employer; has his wages increased in consequence of the useful 
result of the experiments, makes the article invented and permits his 
employer to use it, no compensation being paid for its use or 
demanded; and then obtains a patent on the invention, these facts 
will justify the presumption of a license to the employers to use the 
invention. McClurg v. Kingsland, 1 How., 202. See also similar 
decisions, Chabot v. American Buttonhole and Over-Seaming Co., 
6 Fish., P. C, 71; Semmer's Appeal, 58 Penn. St., 155. 

Where the invention of the employe was constructed and used 
with his knowledge and with his consent, and was constructed under 
his direction, and put into defendant's factories, and used under his 
direction before and up to the date of his application for the patent; 
held, that such construction at an employer's expense while com- 
plainant was in his employ, operates as a special license to the em- 
ployer to continue to use the invention. Magoun v. New England 
Glass Co., 3 B. & A., 114. 

"Persons are not deprived of their right to their inventions while 
in the service of others, unless they have been hired and paid to ex 
ercise their inventive faculties for their employer. A contract by 
which one person agrees to pay a sum of money for the time, labor 
and skill of another, for a given period, gives to the employer no 
right to an assignment of a patent that is issued to his employe for an 
invention made during the period of his employment. * * * * 
The defendant was not expressly required by his contract * * * * 



Il8 EMPLOYER AND EMPLOYE. 

to exercise his inventive faculties for the benefit of the company, and 
there is nothing in the bill from which it can be fairly inferred that 
he was required or expected to do so. " If the employer had no 
right to the invention by virtue of the terms of the defendant's contract 
of employment it was a mere naked license to make and sell the 
patented improvement as a part of his business. This right, if it ex- 
isted, being a mere personal one, was not transferable, and it was 
extinguished with the dissolution of the corporation." Curtis on 
Pat. (4 Ed.), Sec. 213; Windmill Co. v. Empire Windmill Co., 4 
Fish., P. C, 428; Hapgood v. Hewitt, 11 Fed. Rep., 422; see also 
Barry v. Crane Brothers' Mfg. Co., 22 Fed. Rep., 396. 

An exclusive license for the use of a certain patented machinery in- 
vented and constructed during the term of his service, results to the 
employer where the workman agreed to give the employer the exclu- 
sive benefit of his inventive faculties, and of such inventions as he 
should make in a particular class of machinery during the period of 
employment. So, too, an agreement that the employer was to have 
the exclusive benefit of the workman's services in making machinery 
and improvements in the employer's premises operates to license the 
use of machinery, perfected and constructed, or in course of construc- 
tion during the term of service, although it had actually been invented 
and patented by the workman prior to such service. Wilkens v. 
Spafford, 13 O. G., 675. 

"This action is based upon the breach of an alleged contract 
between the parties, (both of whom at the time resided in this 
State) [Wisconsin] to assign the right to the patent for the inven- 
tion. In this case there can be no question but what the State 
Court properly took jurisdiction. Nesmith v. Calvert, 1 Wood, and 
M. 34; Hartell v. Tilghman, 99 U. S., 547, and cases there cited. 

# # * * It is here claimed, in effect, that the plaintiff 
expended several thousand dollars in perfecting the device in ques- 
tion, and bringing it into public use, upon the faith of an implied 
contract with the defendant that he would, upon completion, assign 
to the plaintiff such invention, and his right to letters patent therefor, 
but which he refused to do, after being duly requested. This suit is 
brought to enforce the specific performance of such implied contract. 

* * # * j n Binney v. Annan, 107 Mass., 94, a bill to 
compel the specific performance of a contract to procure a patent, 
and then assign it to the plaintiff, was held good. The same princi- 
ple has been repeatedly sanctioned. Continental Wind Mill Co. 
v. Empire Wind Mill Co., 4 Fish. P. C. 428, Wilkins v. Spafford, 3 B. 
and A., 274; Andrews v. Fielding, 20 Fed. Rep. 123; Hapgood 



EMPLOYER AND EMPLOYE. II9 

v. Rosenstock, 23 Fed. Rep. 86. * * * * The mere fact 
that, in making the invention, an employe uses the materials of his 
employer, and is aided by the services and suggestions of his 
co-employes and employer, in perfecting and bringing the same into 
successful use, is insufficient to preclude him from all rights thereto 
as inventor. [See Scientific Aid, page 12.] The same is true of an 
invention conceived wholly by an employer, and then perfected 
under his supervision, by aid of the mechanical skill and suggestions 
of his employes. These propositions are sanctioned by numerous 
adjudications. Agawam Co. v. Jordan, 7 Wall., 602, Collar; Co. 
v. Vandusen, 23 Wall., 563; Blandy v. Griffith, 3 Fish, P. C, 615; King 
v. Gedney, 1 McA. (D. C), 444. The difficulty with the contrary 
assumption arises from confounding the machine with the invention 
it embodies. Of course there must be a machine which will operate 
before it can be patented. That implies material, workmanship and 
skill combined. But such combination of itself is not enough 
to secure a patent. It must also embody an original conception of a 
new and useful method of doing a specific thing. It is this concep- 
tion so embodied, evolved from the inventive faculties of the defend- 
ant, which constituted the invention in question. The law gave 
to him the exclusive property in it. He still retains it, except in so 
far as he has parted or agreed to part with it. The material, work- 
manship and skill which embodied that conception remained the 
property of the plaintiff. But workmanship and skill are both 
the result of instruction, experience and knowledge. They 
are acquired by being learned. They may aid and stimulate 
invention, but are no part of it. **._## The question remains 
whether the plaintiffs, as such licensee (implied) is entitled to any 
relief in this action. In the very recent case of Hapgood v. Hewett, 
(supra), the bill of complaint was substantially like the one at bar, 
# -2* * # an d sought to compel an assignment of a patent by the 
employe to the successors of the employer. A demurrer thereto, for 
want of equity, was sustained, and thereupon a decree was entered, 
dismissing the bill, and the same has just been affirmed by the 
Supreme Court of the United States. It was there held that Hewett, 
as such employe, took the legal title to the patent in his own right, 
and not as trustee for his employer, and that the latter, at most, had 
a mere license to manufacture: that, as such license would be a per- 
fect defense to an action at law for the infringement of the patent, 
relief in equity was properly denied, and the bill properly dismissed. 
To the same effect is the case of Joliet Mfg. Co. v. Dice, 105 Illinois, 
649. * * * * In Wilkens v. Spafford, (supra), the employer 
contracted for the exclusive benefit of the employe's inventive facul- 



120 EMPLOYER AND EMPLOYE. 

ties and inventions during his term of service, and an exclusive 
license for the use of the machines during the existence of the patents, 
and any extensions, renewals or re-issues of the same was decreed. 
* * * * The judgment of the Circuit Court is reversed, and the 
cause is remanded, with directions to render judgment in favor of the 
plaintiff, and against the defendant, to the effect that the latter ex- 
ecute and deliver to the former a license to manufacture machines 
embodying the invention in question at its present works, perpetually, 
and to sell the same anywhere in the market, free and clear from any 
and all liability for any fee, royalty, or otherwise, for or on account 
of any patent which has been or may hereafter be granted for said 
invention; and, in case of failure to so execute such license within a 
lime to be named, then that such judgment stand as and for such 
license, and to have that effect; and for any other and further pro- 
ceedings deemed necessary to make such effectual." Fuller & John- 
son Mfg. Co. v. Bartlett, 31 N. W. Rep., 747. (Supreme Court, 
Feb. 1st, 1887.) 

Upon a suit under section 4915, Revised Statutes, a court of equity 
will not aid the inventor to obtain a patent for himself in direct viola- 
tion of his agreement transferring the property in his invention. 
Hunstetler v. Atkinson, 23 O. G., 940. 

Where an inventor of a new machine, before a patent issues, makes 
a full and complete assignment of all his right to another person, the 
assignee may have the patent issued in his name. Such are the 
judicial decisions, and such has been the law in continued and unvary- 
ing practice of the Patent Office; but where the transfer or assign 
mentof the inventor's right is only partial, although the part excepted 
may be very small * * * * the assignee does not have any 
legal claim to the patent. He must allow it to go out in the name of 
■the inventor, and be held by him in trust for the use of the assignee 
to the extent of the equities which he has by virtue of his contract. 
Wilson Ager's Inventions; Black's Opinion, 9 Op.. 403. 

An assignment of an imperfect invention with all the improve- 
ments upon it that the inventor may make is equivalent in equity to 
an assignment of the perfected results. In such case the assignees 
become in equity the owners of the patent issued upon the invention 
when perfected, and, if the assignor takes the legal title, he holds it in 
trust for them and should convey. In a contest between an assignor 
in equity, and his assignee, the court of equity will give the same ef- 
fect to an equitable title that it would to one that was legal. Little- 
field 0. Perry, 7 O. G., 964. 

See Scientific Aid, page 12; Partnership, page 93; Undivided In- 
terests, page 65; Insolvency, page 114; Joint Inventors, page 27. 



EXPERTS. 121 



EXPERTS. 



The statute defines the character of an expert as one " skilled in 
the art or science to which his opinion or judgment appertains ", or 
in a business or art most nearly connected with that to which his 
judgment or opinion is applied. A skillful saw mill builder is an ex- 
pert in that business; and one familiar with constructing saw-mills is, 
in that respect, an expert ; and a skillful saw-mill machine maker is 
an expert in the structure of saw-mills as connected with his own pur- 
suit. Page v. Ferry, I Fish., P. C, 306. 

Experts may be examined to explain terms of art, and the state of 
the art at any given time. They may explain to the Court and jury 
the machines, models, or drawings exhibited. They may point out 
the difference or identity of the mechanical devices involved in their 
construction. The maxim of "cinque in sua arte credendum" per- 
mits them to be examined on questions of art or science peculiar to 
their trade or profession ; but professors or mechanics cannot be re- 
ceived to prove to the court or jury what is the proper or legal construc- 
tion of any instrument in writing. A judge may obtain information 
from them, if he desires it, on matters which he does not clearly ap- 
prehend, but cannot be compelled to receive their opinions as matters 
of evidence. Experience has shown that opposite opinions of persons 
professing to be experts may be obtained to any amount; and it ofteta 
occurs that not only many days, but even weeks, are consumed in 
cross-examinations to test the skill or knowledge of such witnesses, 
and the correctness of their opinions; wasting the time, and wearing 
out the patience of both court and jury; perplexing instead of eluci- 
dating the question involved in the issue. * * * * Winans v. 
New York & Erie Railroad Co., 21 How., 88. 

Great respect is due to the opinions of professional men, on matters 
which relate to their professions. On such subjects, and on such sub- 
jects only, are the opinions of witnesses received as evidence. This 
rule applies as strongly to mechanics as to any other profession or 
business. * * * * The science of mechanics is no contracted 
profession. It affords a range for the highest mental vigor, and re- 
quires as deep thought, as nice a discrimination, as any other pursuit. 
The lights of chemistry and all the highest branches of mathematics 
are subservient to it. No one can be an accomplished mechanic 
who has not studied with some success the laws of physics. Brooks v. 
Morris, 3 McL., 432. See Employer and Employe, page 114. 



FOREIGN PATENTS. 



FOREIGN PATENTS. 



Foreign patents on good and valuable inventions, as a 
rule, bring meagre, if any, net returns, and I very much 
question the advisability of procuring patents on inven- 
tions in foreign countries, except on those inventions that 
are in an entirely new field or that are the first inventions 
of their kind, and then it will be well to fully understand 
from your Patent Solicitor the patent laws of the country 
before an application is made for a patent therein. You 
may learn that the conditions under the laws are such as 
to amount to a bar to your success, however meritorious 
your invention. 

You should decide w T ith reference to applying for a 
foreign patent before your application is filed for a patent 
on the same invention in the United States Patent Office, 
and file your applications, both at home and abroad, at 
the proper times, to save all of your rights in all coun- 
tries in which you are to obtain patents. 

In many countries a patent on an invention expires 
with the patent on the same invention in any other coun- 
try, regardless of its date. In the United States a patent 
will expire at the same time of a previous patent on the 
same invention in any other country. 

Note. — By the terms of the convention of nations for the protec- 
tion of industrial property, recently ratified by the President, citizens 
of the United States have the privilege not hitherto enjoyed by them 
of obtaining valid patents in any of the countries which are members 
of the convention at any time within the period of seven months after 
a patent is obtained in the United States. The countries of the indus- 
trial union are Belgium, Brazil, France, Great Britain, Guatemala, Hol- 
land, Norway, Portugal, Salvador, San Domingo, Servia, Spain, 
Sweden, Switzerland, Tunis, and the United States. 

"No person shall be debarred from receiving a patent for his in- 
vention or discovery, nor shall any patent be declared invalid by 
reason of its having been first patented or caused to be patented in a 



FOREIGN PATENTS. 123 

foreign country, unless the same has been introduced into public use 
in the United States for more than two years prior to the application. 
But every patent granted for an invention which has been previously 
patented in a foreign country shall be so limited as to expire at the 
same time with the foreign patent; or if there be more than one, at 
the same time with the one having the shortest term, and in no case 
shall it be in force more than seventeen years." U. S. Revised Stat- 
utes, Sec. 4887. 

It is only a patent for an invention that has been previously act- 
ually patented in a foreign country that is limited by the foreign pat- 
ent. The description of the invention in the foreign patent might 
affect the validity of the domestic one, and might not, but would not 
limit it. "U. S. Revised Statutes, Sec. 4887/' Holmes Electric Pro- 
tective Co., 22 Fed. Rep., 341. 

The above section 4887 of the Revised Statutes, with reference to 
U. S. patents expiring at the same time of previously patented for- 
eign patents on the same invention does not include any extension of 
foreign patents, so where a patent was obtained in Canada for five 
years, and extended for five years longer under the Canadian Patent 
Law, it was held that the patent on the same invention in the United 
States, granted after the patent originally issued in Canada, expired 
with the end of the original term of five years- Held, that if Con- 
gress had intended otherwise, the language of the Statutes would 
have been different, and words would have been employed to signify- 
that the domestic patent should continue as long as the same 
invention was protected by the foreign government. Reissner v. 
Sharp, 16 Blatch., 378. 

The grant of a foreign patent previous to a patent on the same in- 
vention in the United States does not affect the term of the United 
States patent, if a foreign patent has been declared void ab initio by 
a court of competent jurisdiction, unless, and until, the judgment be 
reversed on appeal. It is the legal consequence of such judgment, 
that the foreign patent never had, in fact, any existence, and that, 
hence, it can have no effect in shortening the term of the American 
patent. Bate Refrigerator Co. v. Gillett, 20 Fed. Rep., 192. 

See Void Patents, page 104; Jurisdiction, page 108. 



INDEX TO LAW. 





PAGE. 


Abandonment — 




What is, .... 


. 24 


Intent of Inventor must be shown, 


24 


Presumption of Law is against, 


. 24 


Delay excused by sickness, 


24 


By extreme poverty, .... 


24-25 


Public Use, evidence of, . 


24 


By inventor's consent, 


24-25 


Experimental use not, 


24 


Use for gain, evidence of, 


. 24 


Forbearance or delay not, 


24 


Relinquishment to public is, . 


24-25 


May be inferred, .... 


25 


But not presumed if perfecting, 


. 25 


Business sales constitute, 


25 


Not claimed is, ... . 


• 36 


See Patentable Inventions; Defeating Patents; 


Public Use. 


Agent is infringer, .... 


100 


So are officers, .... 


IOI 


Aggregation, . 


38 


Without new operation or result due to the 


combination 


not patentable, .... 


. 38 


As to analogous principles, 


39 


Assignments, ..... 


. 88 


Assignee Defined, . 


88 


Grantee defined, .... 


. 88 


As to Mortgage, .... 


89 


Licensee — interest of, ... 


. 89 


When void unless recorded, 


89 


What may be recorded, 


. 89 


Conditional, .... 


89 


Valid between parties to, . 


. 89 


Execution of, 


89-9O 


Under Statutes, New York, . 


. 90 


Must be wholly in writing, 


90 


Seal unnecessary, .... 


. 90 


Not even by a corporation, 


90 



125 



126 INDEX TO LAW. 

Page. 
What it conveys, . ... 90 

Previous to patent, . 120, 90 

What should be expressed, . 90-91 

Is a contract, . . . • . . 91 

How construed, . . . . . 91 

Intention of parties, ..... 91 

No artificial rule, . . . . . 91 

As to non-performance, . . , . .91 

As to imperfect inventions, . . 91, 120 

Equitable ownership, . . . . . 91 

Extensions and Re-issues, . . . . 91 

Takes effect when, . . . . . 91 

Conditions subsequent, .... 9 I- 9 2 

Cannot be changed in patent office by parol proof, . 92 

-Construction of, . . . . 92 

Interpretation of, . , . . . . 92 

Invention misnamed, . . . . 92 

Not a nullity, . ... . . 92 

Subject matter, property, .... 9 2_ 93 

May be disposed of, .... 93 

See Undivided Interests; Grants; Licenses; Employer and 
Employe. 

Bankruptcy, . . . . . . .114 

Capital Stock, . . . . . 90 

Of corporations,. ..... 90 

Attachment of shares of stock holder, . . -9° 

Corporation not affected, .... 90 

In assigning patents, . . . . . -9° 

Claims — See Specification and Claims; Construction of Claims. 

Combination, ....... 37 

Defined, 37-3§ 

Subjects of Patents, . 38 

Fully explained, ..... 38-39 

Must be new, ...... 38 

Result must be new, . . . . . -38 

.Aggregation of parts considered, ... 38 

Patent is evidence of novelty of, . . . -39 

Groups of, if co-operate, .... 39 

Combination of elements, don't cover separately, . . 39 

See aggregation; specifications and Claims; Infringements; 
Equivalents; Joinder of Inventions; Double Use. 



INDEX TO LAW, 



I27 



Page. 



Construction of Claims, . 


4i 


Construed with Specifications, 


41-43 


Construed with Drawings, 


43 


Extraneous facts preceding patent, . 


. 41 


Combinations v. Principle, 


4i 


Substantially as specified, 


. 41 


With reference to state of art 


1-42 


Whole patent considered, 


4i 


Whole, and whole as described, . 


42 


Taken in its totality, .... 


■ 42 


No enlargement of patent, 


42 


Patentee bound by claim, 


• 42 


Public not bound, . 


42 


Invention can't be broader, . 


42-105 


Surplus surrendered, 


42 


Claim extends to thing patented, 


42 


Construed liberally, . 


43 


See Specifications and Claims; Combinations; 


Substan- 


tially, etc., Equivalents; Defeating Patents; 


Infringe- 


ments. 




Contractor Infringes, . 


. IOI 


Contracts, . ..... 


90-91 


By corporation, ...... 


. 90 


How evidenced, ...... 


90 


Execution by agent, .... 


. 90 


Corporation must be named, 


90 


An assignment is a, . 


. 91 


How construed, . 


91 


Intention of parties, .... 


. 91 


No artificial rule, . 


91 


As to non performance, 


. 91 


As to employes, . 120, 117, 118, 119 


As to royalty, .... 


• 83 


Corporations, ...... 


IOI 


Will not prevent liability for a tort, 


. IOI 


As to violating conditions, 


102 


Seal not requisite for, 


90 


Nor to Assignments, . 


90 


Officers as infringers, 


IOO-IOI 


See Capital Stock. 




Counsel, value of, 


14 



128 INDEX TO LAW. 

Page. 
Damages and Profits, . . , . .112 

112 
112 
112 
112 
112 
112 
112 
112 



Nothing but for patented improvement, 

As to territorial rights, 

Customary charge measure of, 

Examples given, ... 

As to interest, ..... 

As to manufacturing, . . 

Their supplying demand, 

Rule in such cases of . 

As to patent profits. . . . 112-113 

As to mechanical profits, . . 112-1:3 

Fully explained, ... . 113 

Fruits of advantages are, . 1 13 

As to actual, . . . . 1 [3 

As to exemplary, vindictive and punity, 113^ 85 

As to profits of infringing party, . . 113 

Infringement settlements, no measure of. . . 84 

Xor admissable against strangers, . . 84 

Established royalty, measure of . . 84 

Royalty must not vary, . 84 

Is the safest rule, . . . 84 

And usually follows, . 84 

Two prices, lowest govern, . . 84-85 

Royalties must be uniform, . 85 

To be binding on a stranger, . . . -85 
As to past infringements, .... 90-91 

See Jurisdiction; Royalty; Employer and Employe; 
Licenses; Infringements. 

Debtor, . . . . 114 

Defeating Patents, ...... 44 

As to prior knowledge, . -43 

Completing experiments, 43 

Priority of inventions, 43 

Reduction to practice, . ,43 

Preponderating proof, . . 43 

Actual use, . . .43 

Perfected machine, . 25 

Reasonable diligence, ... . 43~44 

Foreign country, . . . . . -44 

See Abandonment: Priority of Invention; Identity; Joint 
Inventions; Infringements; Foreign Patents. 



INDEX TO LAW. 



129 



Page. 



Disclaimer, ....... 


49 


When may be, ..... 


49 


Must be substantial part, . 




Actions not affected by, . 


49 


Except for delay, . 


49 


When necessary, ..... 


• 49 


What affirmed by, . 


49 


Claims not well founded, .... 


■ 49 


Claims well founded, . ... 


49> 5° 


Effect of, . . . 


• 5o 


Entitled to damages, . 


50 


Unless unreasonable negligence, 


. 50 


When time begins to run, . 


5o 


What not essential, . 


• 50 


Will limit claims, . 


104 


See Defeating Patents; Re-issues. 




Double Use, ...... 


• 23 


See Patentable Inventions. 




Employer and Employe, . . , . 


- "4 


Object of Patent Act of 1836, , 


114 


Patentees public benefactors, 


114 


As to protection of rights, . 


114 


Employment gives employer no title, 


116, 117 


To employe's inventions, . 


no, 117 


May make special contract, , 


117 


Ordinary contract may license, 


117 


But not confer legal title, • 


. "7 


Effect of increased wages, „ 


117 


Justifies presumption, . . . . 


: HZ 


Of a license, . 


117 


Employer's consent material, 


= 117 


So is employer's expense, . 


117 


In perfecting machine, .... 


• 117 


Hiring inventive faculties, , 


II? 


Effect of, . . . . 


• 117 


Operates only as license, . 


117, Il8 


Contract material, . 


. Il8 


As to an exclusive license, ♦ 


Il8 


From employe inventor, , 


. Il8 


Operates only as a license, « 


Il8 


To use employes invention, . 


Il8 



13° 



INDEX TO LAW. 



As to his prior inventions, 

Important case given, 

As to services and suggestions, . 

Of co-employes and employer, 

Do not effect employe inventor, 

Same rule for employer, 

Principle elucidated, .... 

Equity will not aid inventor, 

In violating agreement by patenting. 

As to assignments before patent issues, 

Holding patent in trust, .... 

For equity rights, .... 

As to imperfect inventions, 

Carries perfected results, 

Courts of equity will give, 

To an equitable title, 

Same as to legal title, 

See Scientific Aid; Partnership- Undivided 
Insolvency; Joint Inventors. 
Estoppel — See License. 
Equivalents, ...... 

Defined, ..... 

Has two meanings, . , . . 

Mechanical and Inventive, 

Same objects and results are, 

Substances of similar properties with new results, 
Experts, ...... 

Statutory, definition of, . 

May be examined, 

To explain terms of art, ... 

And state of the art, . 

And machines, models, etc., 

May point out differences, identity, etc., 

Not to construe written instruments, 

A judge may inquire of, 

Respecting opinions, professional men, 

Relating to their professions, 

Only competent in those matters as, 

As to science of mechanics, , 

Qualifications necessary, . 
See Employer and Employe. 



Page. 




Il8 


118, 


II 9 


12, 


II 9 




119 


. II 9 , 


112 


H9> 


112 




II 9 




I20 




I20 




I20 


. 120, 91 


. 


120 




I20 




J 20 




I20 


120, 91 




I20 


Interests; 






40 




40 




40 




40 




41 


are, 


41 


. 


121 




121 


. 


121 




121 


. 


121 




121 


; 


121 




121 


, 


121 




121 


, 


121 


• 


121 


• 


121 




121 



INDEX TO LAW. 



x 3* 



Page. 



Fees of Patent Office — See Rules of Practice. 
Foreign Patents, « 

As to convention of nations, 

For protecting industrial property, 

Countries of the Union, . 

Section of statute given, 

As to invalidity on account of, 

As to public use in U. S.,, 

As to limiting term, by, • 

What limits, . 

As to foreign description, 

As to extensions of, 

Affecting U. S. Patents, . 

A case given, . . 

Intention of Congress, 

As to declaring void, 

Effect of in U. S., 

As to foreign judgments, 

As to validity of U. S. Patents, 

Not affected by validity of, 

May effect duration, , 

See Void Patents; Validity of Patents; Jurisdiction 
Form, • ... 

Not patentable, . 

Combined, may be, ..... 
If necessary to utility, may be, * 
If new effect produced, is, 

Jury must determine, .... 
Does not change principle unless new effect produced, 
Change of form by mechanism not new, 
As to article of commerce, 
Distinctions with reference to, 

See Inventions; Patentable Inventions. 
Grants, ..... 

Defined, > . . . 

Assignees may sue, . 

Must be assignee's and not licensees, 
How construed, . 
As to partial rights, . 

See Territorial and Shop Rights, Licenses; Infringe- 
ments; Assignments. 



• 


122 




122 


• 


122 




122 


122, 


123 


122, 


123 


. 


123 


123, 


106 


• 


123 




123 


• 


123 




123 


- 


123 




123 


- 


123 




123 




123 




106 




106 


IO6, 


123 




21 




21 


, 


21 


21 


, 22 


■- 


22 




22 




22 




22 




22 


• 


22 




82 


So- 82, 7 




82 




82 




92 




82 



132 



INDEX TO LAW. 





Page. 


Identity, , ... 


102 


What constitutes, 


102, 103 


As to colorable differences, . 


. 102 


As to same effects, 


102 


As to combinations, .... 


. I02 


Is identity of principle, , 


102, 103 


Is a question of fact, .... 


103 


Characteristic resemblance, fairest test, 


103 


Fully explained, , 


. 103 


See Infringements, Defeating Patents, 




Indiana, - 


IIO, III 


Infringements, . 


93 


Substantial identity is, 


9%> 93, 95, 97 


Structure and operations, 


93 


Same in principle, .... 


. 94 


As to burden of proof, 


94 


Names immaterial, .... 


. 94 


When substantially different, 


94 


Jury to judge, .... 


• 94 


Substantial equivalents, . 


94 


Differences in degree not regarded, . 


. 94 


As to different inventions, 


95 


Examples given, .... 


. 95 


Inventor's rights, • 


95, 9 6 , 97 


Patent for combination, 


- 96 


All parts employed, 


9 6 


New part not, .... 


. 96 


Patentees must prove, 


' . 96, 97 


Principle and results, 


• 97 


Specifications clear or no, 


97 


Similarity of design, .... 


. 97 


Mechanical skill is not, 


97 


As to particular form, 


97, 98 


Structural differences unimportant, 


98 


As to forms, ..... 


. 98 


Of but little weight, 


98 


As to original machines. 


17, 98 


As to distinct improvements, 


98 


Part of an apparatus, 


. 9 8 


Two machines for one purpose, • 


98 


As to two inventions in one patent, . 


. 98 



INDEX TO LAW. 



1 33 



As lo separate inventions in one patent, 
Experimental use not, .... 

As matter of business is, . 

As to separate materials, .... 
As to exceptions, ..... 

An example given, ..... 
Performance of conditions, 
As to non -performance of conditions, 
As to foreign countries, ..... 
See Joinder or Inventions; Combinations; Equivalents 

Defeating Patents; Identity; Licenses; Combinations 

Substantially; etc., Infringers. 
Infringers, .... 

Where complainant first in the field, 
Favorable constructions broad, 
As to defective elements, 
In a combination, 

Liable for use of the good element, 
Old combinations and new results, 
Parts of combinations, 
Manner of use influences, 
As to intent, .... 

As to immaterial changes, 
Who treated as infringers, 
All participating liable, .... ioo, 

Corporation won't protect, . . 101, 

As to wrong doer, 

As to agents, .... 

Same as principal, 
Although no interest, 
As to desisting, 
Contractors liable as, . 
As to hotel keeper, 
W r ith reference to register 
Inferior machine in defense, 
As to injuries by, 

See Infringements; Equivalents; Combinations; Identity; 

Jurisdiction; Licenses. 
Injunctions, ....... 

Powers of courts to grant, ..... 

Courts of equity, ... 



Page. 
98 

99 
99 
99 
99 
99 
99 
99 
99 



100 
100 
100 

IOO 

100 
100 
100 
100 

IOO 

100 
100 

IOO 
IOI 

102 

IOI 
IOI 
IOI 
IOI 
IOI 

102 
102 
102 
102 
102 



107 
107 
107 



134 



INDEX TO LAW. 



In patent matters, 

As to damages, 

Exceptional case given, 

Patentees must supply articles, 

Or injunctions refused, 

As to ceasing infringements, 

As to joint owner, 

See Jurisdiction; Infringer; Infringements; Damages 
and Profits. 
Insolvency, .... 

Patent rights are incorporeal, 

No existence in states, 

Have no locality, 

Not subject to state court processes, 

Conveyance by statute only, 

U. S. courts must compel transfers, 

As to bankrupt law in, 

Rights pass to assignee in, 

At time of assignment, 
See Jurisdiction. 
Interference, 

Definition of, . . . 

See Priority of Inventions. 
Inventions, 

May infringe, 

Though patentable, . 

What are patentable, 

Flash of thought may be, 

Study not necessary, 

Result not, 

Law of nature not, 

Scientific fact not, 

A principle not, . 

Change of form not, . 

Particular form may be. 

Proportions not, 

Degree not, 

Combination by mechanical skill not 

Are property, 

See Patentable Inventions; Form, Size, Proportion; 
Novelty; Utility. 



Page. 
107 
107 
107 
107 
107 
101 



114 
114 
114 
114 
114 
114 
114 
114 
114 
114 

14 
H 

17 
17 
17 

2C, 21 
20 
20 
20 
20 
20 
20 
20 
20 
21 
21 
21 

9 2 > 93 



INDEX TO LAW. 



r 35 



Joint Inventors, . . . 

Who are, .... 

Cannot take a patent in his own name, 

Joint patent to sole inventor void, 

Patent to one if joint void, 

Patents not granted to non- inventors. 
Jurisdiction, 

Different courts have, 

Circuit courts, 

Final judgments, . 

U. S. and state courts, 

Supreme court, 

Statute of limitation, 

Statutes of foreign countries, 

How construed, 

As to final decrees, 

Where validity contested, 

As to patented machines, 

Passing from patent monopoly, 

With royalty paid, 

Subject to state tax, . 

Statute of Indiana, 

Inserting patent clause in note, 

Held unconstitutional, 

Cases cited, 

An opinion given, 

Patents not tangible property, 

But an incorporeal right, . 

Cannot be interfered with by state, 

See Insolvency; Patent Applied For; Employer 
ploye. 
Joinder of inventions, .... 

Elements in combination, 

Improvements in different machines not, 

If connected in use, . 

Distinct improvements in one machine, 

Divisional patents valid, 

Granting of discretionary, 

Process and product disclosed by inventor, . 

Process and use not, .... 

As an article of manufacture product with process 



Page. 


2 


7,28 


. 


27 


-o 


28 


, 


28 




28 


. 


23 




108 




108 


. 


108 


, 


108 


no, io8 3 


109 




108 




108 




108 




108 


io8, 


109 


108, 


109 


. 


no 




no 




no 


. 


no 


. 


no 




no 




no 


no, 


in 




in 




in 




in 


in, 


112 


and Em- 






34 




34 




34 


34 


k 35 




34 




34 




34 




35 




35 


not, 


35 



1 3 6 



INDEX TO LAW. 



Kentucky, . 

Labels, . 
Laws — Patent. 
License, 

Defined, .... 

When not necessary. 

Difference between assignment and, 

Surrender by part don't release otlie 

Conditions must be performed. 

If not is infringement, 

Fraud or mistake cancels, 

Recording not necessary, 

Is not apportionable, 

Question (if to party and assigns 

If not to assigns is personal, 

Patent Act of 1836 as to, 

Fully explained, 

Conflicting decisions, 

Cases not parallel, 

Licensees cannot sue under, 

Only persons mentioned in the Act n 

Licensee has remedy. 

In court of equity. 

See Grants; Royalty; Assignment 
Louisiana, 

Machine, .... 

Simplicity defined, 
Comparisons for simplicity, 
Marking articles "patented." 
Duty of patentees, 
Object of, 
Effect of not, 
Illegally marking, 
Deceiving the public, 
Penalty for, 

No penalty if not patentable, 
Acts of employes, 
What must appear, 
Effect of not appearing, . 
Statute mandatory, 
Mechanical skill, 



assignable 



s under. 



amed. 



Page. 




no 




7 




7 




35 


7- s 5 


88 




85 




86 




86 


86 


99 




86 




86 




86 



. 86 

86 

86. $7 

§7 

• 87 
87 

■ *7 
87 

. 88 
SS 

. 109 

58 

• 58 

58 



• 5o 
50 

■ 5i 
5i 

. 5i 
5i 

• 5i 
5i 

• 5i 
5i 

5*> 52 
12, 19, 106 



INDEX TO LAW. 



J 37 



Misnomer, ...... 

New — see Novelty, .... 

New York, . . 

Novelty, ...... 

What is, ... 

Original thought .... 

Inventive skill is, .... 

No standard to guage, 

Degree of mental power required, 

Inventive genius, .... 

Patent evidence of, ... 

Want of must be proved, 

Validity of patent not determined by degree of, 

Mechanical skill not, 
Partnership, ..... 

Joint owners, not, .... 

In patent business, may be, . 

As to inventions of partner, 

Same as employer and employe, 

See Undivided Interests; Employer and Employe 
Patentable Inventions, 

What are, .... 

But one patent for, 

Separate patents for, 

An old process doubtful, 

Change of form not, . 

Particular form may be, . 

Selection of material not, 

Alteration of combination may not be 

Article of commerce, 

Article, new, 

Distinction in, 

Double use not, 

May infringe, 

Process not, 

Ingenuity and skill, . 

See Invention?; Form, Size, Pioportion; Novelty; Util 
ity; Abandonment; Public Use; Defeating Patents 
Specifications and Claims; Aggregation; Double Use. 
Patent Applied For, ..... 

Rights of applicant, ..... 



63, 



Page. 
92 

23 
90 

23 
23 
23 
23 
23 
23 
23 
23 
23 
23 
23 
93 
93 
93 
93 
93 



19, 20 
19, 20, 21 
20 
20 
20 
20 
, 21 
21 
21 
22 
22 
22 
23 
17 
35 



106 



44 
45 



J38 



INDEX TO LAW. 



Page. 



Form 



of all prior patents 



Patent laws, 
Patents. 

Who may obtain, 

Information about, 

Inventive skill required, 

Mechanical skill not, 

Novelty and utility only, 

See Inventions; Patentable Inventions 
Practice —See Rules of, 
Priority of Inventions, 

First inventor, if diligent, has, 

Date of invention is date of discovery, 

Not date of perfecting, 

Importance of, diligence for, 

No comparison of diligence, 

To determine fact of diligence, 

Degree of results, immaterial, 

Law charges patentee with a knowledge 
in his line, 

False concessions of, . 

Arguments of, 

See Defeating Patents; Assignments. 
Property, 

Inventions are, without patent, 

Also with patent, 
Proportion — See Form. 
Public Use, 

What is, . 

Inventor must consent, 

Experimental use is not public, 

Surreptitious use, don't effect. 

Inventor must assert his right, 

Intention immaterial, 

Right to assistance, 

May make experiments publicly, 

Law does not presume consent, 

Machine must be perfected, . 

Person using must understand the utility of the machine to 
constitute, ....... 

Cannot assign interest and escape, 

See Abandonment; Defeating Patents. 



29: 



26, 



19 

7 
20 
20 
20 

7 
29 
29 
29 
29 
29 

30 
30 
30 

3i 
92 
92 

92 
.45 
.95 

25 
25 
25 
27 
26 
26 
26 
, 26 
26 
26 
26 

27 
27 



INDEX TO LAW. 



*39 



Re-issues, ..... 

Patents may be, , 

Terms and conditions, 

Cannot expand claim beyond invention, 

Nor embrace new matter, 

Example given, 

Reasonable time, 

Executors or administrators, 

Infringements no recovery, . 

Rules of Patent office, 

Furnish forms for, 

Surrendering of patents, 

How cancelled, 

As to antecedent suits, 

Surrendering extinguishes, 

As to partial interests. 

Pending suits fail, 

Judgments not affected, 

Part of claims may be good in, 

Others illegal, 
Royalty, .... 

Patentee is entitled to but one. 

Liability for, ...... 

Licensee with benefits cannot deny validity, 

Nor against contract, .... 

Invalidity good defense to note, 

License is personal, ..... 

Unless expressed differently, 

Eviction good defense to, . 

Infringement settlements cannot establish license fee, 

Nor admissable against strangers, 

Measure of damages established by, 

Is the safest rule for, 

Prices not variable for, 

Two prices, lowest govern, . 

Damages exemplary for, 

As to Government employes, 
Rules of Practice, 
Scientific Aid, 

Inventors, right to, 
See Suggestions. 



Page. 

4 6 
46. 47 

47 
47 
47 
47 
47 
48 
48 

48,47 
48 
48 
48 
48 
48 
48 
48 
48 
48 
48 
83 
83 
83 
83 
83 

83,84 
84 
84 
84 
84 
84 
84 
84 

84,85 

84,85 
85 

• 85 

7 
12 



140 



INDEX TO LAW. 



Page. 



Seal — See Assignment. 
Size — See Form. 
Skill. 

Mechanical, c 

Inventive, ..... 
Specifications and Claims, 

Specifications defined, 

Construed liberally, . 

Purposes of, .... 

Guide for skill only, . 

Drawings part of, ... 

Court cannot enlarge, 

Imperfections inventors misfortune 

But courts are liberal, 

Claim denned, . . 

Is something described, . -. 

No claim is abandonment, 

Positive alternative claim good, 

Broadest claim for new art, 

Not abstract right, 

For structural combination or method, . 

Is a limitation, 

Knowledge of state of the art assumed. 

Elements combined not covered separately, 

Two inventions one patent, 

As to separate inventions, 

Must describe improvements, 

Or patent invalid, 

Must be complete, 

See Rules of Practice; Patentable Inventions; Public 
Use; Joinder of Inventions; Joint Inventors; Equiva- 
lents; Substantially, etc.; Construction of Claims; 
Double Use; Identity; Defeating Patents; Re-issues; 
Infringements; Form; Novelty. 
State Laws — See Jurisdiction. 
Stock — See Capital Stock. 
Substantially. 

When two machines are the same, . 

Same in principle, . 

Meaning of with, ...... 

"As set forth," . 



o 


. 12, 20, IO6 


. 


12, 20, I06 




. 35 




• 35> 36 




■ 36 




36 




■ 36 


. 


36 




. 36 




36 




. 36 




36 




36, 105 




36 




• 37 




37 




. 37 


•. 


37 




37, 42 




37 




• 39 




98 




. 98 


. 


105 




. 105 




106 



22 

22 

39 



INDEX TO LAW. 



141 



" As described," .... 

"For the purposes set forth," 

" As specified," .... 

"As above described, " 

All refer to specification, 

Always implied, 
Suggestions, . 

Inventors, right to, 

Necessary to receive, 

Value of, 

Suggestors, of part, not joint inventors, 

Suggestors of whole are sole inventors, 
Taxes — See Jurisdiction. 

Tenants in Common — See Undivided Interests. 
Territorial and Shop Rights. 

Purchasers not confined to territory, 

May use outside of it, 

In another man's territory, 

Without remedy, 

Purchaser may use, 

Purchaser may repair, 

Purchaser may improve, . 

Contracts interpreted like other contracts, 

And construed the same, . 

Cannot restrain grantee from advertising, 
See Infringements; Undivided Interests 
Licenses; Royalty; Grants. 
Title — See Employer and Employe; Assignments 
Trade Mark, 
Undivided Interests, 

Owners are tenants in common, 

Are not partners, 

Cannot be conversion, 

Rights, Abstract and Intangible, 

Cannot be destroyed, 

Not lost without consent, 

How in real estate, 

Co-tenant not excluded, 

Applies to Patent Rights, 

Conflicting opinions, . 

But not analogous, 



Page. 


39 


• 39 


40 


. 40 


40 


. 40 


12, 28 


12 


12 


12 


28 


. 28 



80 

. 80 

80 

80, 8 



Asssienments; 



7 

66 
67, 68, 69 

67 
• 67 

67 
. 67 
. 67 

67 
. 67 

67 
. 68 

68 



142 



INDEX TO LAW. 



Adjustment of rights difficult, 

Co-partnership not as joint patentees, 

Cannot become partners, 

By undivided interests alone, 

Injunctions should not issue, . 

Owners have common rights, 

License from one not enjoinable by another, 

Opinion by Treat, J. 

In confirmation, .... 

Fully explained, ..... 

Liability of joint owners in infringing another patent 

Case given, ..... 

See Territorial and Shop Rights; Grants; Assignments 
Employer and Employe; Partnership; Joint Inventors 



Page. 
68 
68 
68 
68 
69 
69 
69 
69 

69 

69 

70 

69, 70 



Use, 

See Double Use; Patentable Inventions: Public Use 
Utility, ....... 

Means useful, . 

Not frivolous, 

Not injurious, . 

Required for patent, 

Patent, evidence of, 

Extensive use, evidence of, 

User estopped from denying, 

Price paid, evidence of, . 

Defendant must prove want of, 

Degree of, unnecessary, . 

See Patentable Inventions; Novelty. 
Validity of Patents, . 

Patent, evidence of, 

Proof on defendants, 

Present uselessness no defense, 

Must be useful when patented, 

Extensive use, evidence of, . 

As to proofs, 

Effect of judgments, 

As to two patents of a kind, 

As to owner's consent, 

Patentee's oath does not effect, 

Sub-dividing inventions, 

As to surrendering patents, 



89, 23 

23 
23 
23 
23 
23 
23 
24 
24 
24 
24 
106 

103 
103 

103 
103 
103 
103 
104, 27 
104 
104 
104 
104 

34 
48 



INDEX TO LAW. 



J 43 



Io6, 122 



105: 



As to old and re-issued claims, 

As to specifications, 

As to foreign countries, 

See Infringements; Defeating Patents; Void Patents 
Void Patents, 

Patent broader than invention is, 

Example given, . 

False suggestions, effect of, 

In specifications, 

As to inaccurate specifications 

As to technical terms, . 

As to uniformity of decisions, 

Can mechanic construct, 

As to statute, 

As to comparisons at trial, 

As to extraneous evidence, 

Fraudulently concealing, 

Results must be produced, 

As to different inventions, 

As to constructions, . 

As to proceedings in Patent Office, 

Defendant must prove, 

As to utility, 

As to known methods, 

As to skill and ingenuity, 

As to joint patents, . 

Meritorious combination and principle, 

See Validity of Patents; Infringements; Defeating Patents; 
Disclaimer; Utility; Construction of Claims. 
Warranty — See Assignments. 
Wisconsin, ....... 

Writings— See Assignments, and Index to Facts; " Employer 
and Employe; Development of Inventions and Scientific 
Aid." 

See Index to Facts next page. 



Page. 

49 
105 

123 



104 

104, 105 

105 

104, 105 

104, 105 

. 105 

105 

. 105 

105 

106 

106 

106 

106 

106 

106 

106 

106 

106 

106 

106 

106 

28 

4i 



INDEX TO FACTS. 





Page. 


Agents — see Patent Agents, 


■77 


Appropriation of inventions, . 


12 


Protection against, 


. T3 


Archives, secret, 


• 53, 14 


Art, state of, 


• 53, 32, 16 


Mechanics, skilled in, 


55 


Assignments, . 


. 89 


Frequently informal, 


89 


As to quit claim, 


. 8 9 


Warranty of title, 


89 


As to form of, ... 


. 89 


Patent office form, 


89 


Should be witnessed, 


89, 90 


Of undivided interests, 


66 


Provisions in^ . 


. 66 


Title in trustee, 


66 


Attaching devices, 


. 76 


How to introduce, 


76 


Attorneys, qualifications of, 


14 


Authority, local, . 


5 


Average man, dangerous, 


58, 10 


Awakening to daylight, 


32 


Beauty in design, 


58, 53 


Brokers — See Patent Brokers, 


77 


Business programme, 


. 64 


Capital, Enlisting of, . 


62 


Advantage of, 


. 65 


Capital stock for patents, 


73 


Castings, shrinkage of, . 


• 59 


Testing of, . 


60, 61 


Quality of, 


. 61 


Cause and effect explained, . 


56 


Caution, degree of, 


6 


Caveats, . 


13 


Certificate of character, 


71 


Charity, . 


65 



144 



INDEX TO FACTS. 



J 45 





Page. 


Claims, rejected, ..... 


• 31 


Modification of, . 


32 


Coil springs, ..... 


. 62 


Commissioner of patents, 


7, 30 


Correspondence with, 


• 30 


Competition, locate near, 


75 


Conclusions, reasons for, 


57,9" 


Effect of, . 


57 


Acting upon, . . . . 


« 57 


Confidential archives, 


. 53, 54 


Contracts — 




Of License, .... 


73 


Of Territorial Rights, 


. 80 


Of Grants, .... 


82- 


Of Royalty, ..... 


. 83 


Copies of patents, .... 


7» 30 


Copyright— see pamphlet of Patent Laws, 


7 


Cupola, charging of, . 


61 


Drawing from, .... 


. 6* 


Danger — 




Of Re-Issues, .... 


. 46 


Of Experiments, .... 


55* 


Everywhere, .... 


. 


Daylight, awakening to 


3* 


Design, beauty in, . . 


58, 53- 


Degree of caution, .... 


6 


Development of inventions, . . . 


10 


Importance of, 


11 


Devices, ...... 


. 58 


For Attacnment, 


76 


How to introduce, .... 


. 76 


Two practical methods, . 


76 


Diligence, reasonable, .... 


. 29, 


Dividends, ..... 


64 


Employer and Employe, .... 


. 114 


Employe, inventors, 


114 


Disputes and controversies, 


. 115. 


As to nature of employment, 


115; 


Effect of, ... 


. 115 


As to implied license, 


115 


Effect of, .... 


. US. 



146 



INDEX TO FACTS 



In enlisting capital, 

Usually not assignable, 

Held "merely personal," 

As to general employment, 

Effect of, . 

As to inventions, 

Owned wholly by employe, 

No implied license, . 

Unless perfected, employers expense, 

With inventors consent, 

Caution to employes, 

Caution to employers, 

As to written agreement, 

Between employer and employe, 

As to employe's inventions, 

Great importance of, 

Consequence of neglect, 
Examination, preliminary in Patent Office 
Example of losses, 

Of experience w T ith mechanics, 
Exhibiting inventions, 
Expenses, .... 
Experience, how acquired, 

Inducing reflection 

Conclusions from, 

In business, 

In selling patents, 

In introducing inventions, 
Experiments and mistakes, 

In charging cupola, 
Fear of employing mechanical skill, . 
Fees, contingent to solicitor, 

Government — See Rules of Practice, 
Foreign Patents, 

Usually bring meagre returns, 

Advice against, 

Except in new field, 

Must fully understand, 

Patent Laws of countries, 

Previous to any application, 

As to foreign and domestic, 



US 



64, 
62, 



Page. 
115 

*5 

15 
15 
15 
15 
15 
15 

*5 

16 
16 
16 
16 
16 
16 
16 
16 
16 

55 

• 56 
79, 80 

• 3i 

5, 54 

• 56 
57 
64 

7h 72 
. 7* 

55, 52 

. 61 

12 

16, 17 

7, 3i 

. 122 

122 

. 122 

122 

. 122 

122 

122 

122 



INDEX TO FACTS 



To Save All Rights, . 

As to patents expiring, 

In different countries, 

By previous patents, 

As to convention of nations, 

Protecting industrial property, 

Countries of industrial union, names of, 

Rights by terms of, 
Forms, Sizes and Proportions, 
General Location, 

How to select, 

Where not to select, 

When selected what to do, 
Grants, 

Importance of, . 

Habits, 
Ignorance, Wink of, . 
Indulging, . 
Industrial Union, 
Information Cheap, 
Infringements, Lost with re-issue 
Injunctions, 

In patent laws, 
Interference. 

Intrinsic Value of Inventions, 
Introductory, 
Inventions. 

Intrinsic Value of, 

Development of, 

Appropriation of, 

Sleeping of, 

Patentable, 

Priority of, 

Risk Incurred, 

Perfecting of, 

Reducing to practice, 

Mistakes in perfecting, 

Testing of, 

Reduced to practice, 

Let well enough alone, 

Example of failures, . 



147 

Page. 
122 
122 
122 
122 
122 
122 
. 122 
122 

59 
76 
76 
76 
76 
82 
82 
64 
58 
64 
122 

3i, 75 
46 
. 107 
7. 107 
• 14 
8 

5 

8 
10 
12 

17 
18 

28 
28 
52 
52,65 
52 
53 
55 
55 
55 



148 



INDEX TO FACTS. 



Operating, .... 

Value of. 

Introducing of, 

Difficulties in introducing, 

How to exhibit, .... 

Qualifications to exhibit, 

As Attorneys, .... 
Inventors, Suspicious, 

Indiscreet, .... 

Ask for too little, 

Mistaken ideas of, ... 

Opinions of references from Patent Office, 

Misleading of, 

ZSot to be his own solicitor, . 

Deciding material questions, 

Consulting with others, 

Incompetent to test, 

Let well enough alone, 

Habits, ..... 

Advantage small against capital, 

Abandoned to Charity, 

Opinions of, in patent business, 

Local authority of, 
Investment, .... 

Iron, Mixing of, ... . 

Joint Owner, .... 

Labels, ... 
Laws, Patent, 

Legal Status of Parties, Little regard for 
License, .... 

Provisions in. 
Locations, General, . 

How to select, 

Where not to locate, 

When selected, what to do, 
Locations, Special, 

How to select, 

Where to select, 

When selected, what to do, 
Losses, .... 

Los: Opportunities, 



Page. 
62 



60, 34. 59- 



/ 

7 
6 

. 73 
73. 81, S2 

■ 76 

76 

. 76 

76 

■ 74 
75 

. 74 

75 

55. 6 2, 63 

73 



INDEX TO FACTS. 



149 



Machines and Devices, 
Manufacturing, .... 

Forms, sizes, and proportions, 

Interchangeable parts, 
Marks, Trade, 
Material and Manufacture, 
Means, want of, . 

Mechanic, claiming joint inventorship, 

Mistakes of, . 

Theories of . . 

Jealousies of, . 

Half owner, 
Mechanical skill, fear of, 

Understanding in relation to, 

Discriminations in, 
Mistakes by Inventors and Others, 
Mixing Iron, 
Novice, 
Office Fees, 
Operating Inventions, 
Opinions of Inventors, 

Of others, 
Owners, Joint, 
Party in interest with inventors, 

Risk incurred, 
Patents. 

Cannot be changed, 

May be re- issued, 

May be disclaimed, 

Defeating, 

Public use, 

Reasonable diligence, 

Procuring of, 

No Patent, no pay, 

Application for, 

Re issues of, . 

Where to sell, 

Foreign, 
Patent Agents and Patent Brokers, 

Asking for money, 

Example given, 



59. 



62 



Page. 
58 
59 
59 
61 

7 

53, 54 

62 

11 

56 

56 

77 

11 

12 

52, 57 

19 

6, 52 

61 

59 

7 

62 

74 

57, 79 
66 
66 
66 

18 
. 18 

46 
. 29 

29 
. 29 

30 
16, 32 

33, 44 

. 46 

7i 

. 122 

77 

• 78 

78 



*5<> 



INDEX TO FACTS. 



Patentable Inventions, 

Importance of knowing, . 
Patentability, Certainty of, 

Favorable report on, 
Patent Laws, Pamphlet of, 
Patent Office, Confidential Archives of. 

Qualifications to practice in, 

Preliminary examination in, 

Responsible to nobody. 

Reports of, 

Commissioner of, 
Patent Office Reports, 
Patent Pirates Retreat, 
Patent Right Men, 

Require certificates of character, 

To be sent in advance, 
atterns, Wood, .... 

Metal, .... 
Perfecting Inventions, 
Pirates of Patents, 
Practice. Rules of, in Patent Office, 
Preliminary Examinations, 
Priority, ..... 
Procuring Patents, 
Programme for business, . 
Proportions, forms and sizes, . 
Protection from Appropriation of Inventions, 
Provisions in License, Contract, 
Publication, Giving partial information. . 
Qualifications, Mechanical, . 

To exhibit, .... 

Of Attorneys, 
Quality of Castings, 
Questions to be Answered before Application for Patent, 
Reasons, importance of. 

Reducing inventions to practice, .... 
References by Patent Office, .... 
Re-issues. 

Danger of, . .... 

New matter in, . 

Infringements, forfeited, .... 



Page. 

. 18 

18 

1 6. 19 

17 

7 

14 
14 
16 
18 
30 
7, 30 
30 
14 
70 
7i 
70 

• 59 
60 

52 

7 

64, 16 

. 28 
30 

■ 64 
59 
13 

Si, 82 

7 

55 
. 80 

14, 15 
. 61 



9, 57, 

?2, 



59 
65 
3i 

46 
46 

46 



INDEX TO FACTS. 



T 5i 



Rejected Claims, ..... 


31 


Representing inventions, . 


79, 80 


Requirements. 




Mechanical, ..... 


55 
8 
8 


Results, ....... 

Degree of, ..... 


In perfecting, ...... 


54, 56 


In manufacturing, .... 


61, 62 


In undivided interests, 


. 65 


In dealing, . . . 


72 


In lost opportunities, . . . 


73, 74 


In locations, ..... 


• 74, 76 


With Patent Brokers, .... 


. 78 


In introducing, ..... 


79 


In shop rights, . 


. 80 


See Procuring Patents; Employer and Employe. 




Royalty, ...... 


72 


Provisions in contract, .... 


• 73 


A measure of damages, .... 


. 83, 113 


Sale of patents, .... 


70. 7i, 73 


Secret Archives, ..... 


• 14, 53 


Shop Rights, .... 


. 80 


How to grant, ..... 


80, 81, 82 


Caution with reference to, . 


80, 81, 82 


Shrinkage of castings, 


59 


Simplicity, ...... 


• 57,8 


Meaning of, .... . 


• 58,8 


Explained, ...... 


. 58 


Sizes, forms and proportions, . . 


59 


Skill, 


. 19 


Mechanical, . ... 


19 


Inventive, ...... 


19 


As to patentability 


19 


Solicitor of patents, no patent, no pay, . 


16, 32 


Fees of, . 


16 


Employing of, . 


• 30 


Information for, ..... 


30 


Personal interview, .... 


. 33 


Inventor not to be his own, 


33 


Correcting mistakes, . 


• 33 


Of his own, ..... 


34 



152 



INDEX TO FACTS. 



Special Locations, 

How to select, 

Where to select, 

When selected what to do 

Secure aid, 
Special Machines and Devices, 
Springs, Coil, 
State of the Art, 

Mechanic's skilled in, 
Status of parties, 
Sub- divisions of Patent Business, 
Superintendents. 

Jealousy of, 
Terms, in contract, 
Territorial and shop rights, 

How to grant, 
Testing inventions, 

Castings, 
Theories of Mechanics, 
Title, 

Tools and machinery, 
Trade Marks, 
Trustee to hold title, . 
Undivided interests, 

Assigning of, 

See Assignments. 
Union, Industrial, 
Utility, importance of, 

Commercial, 
Want of means, 
Wink of ignorance, 



Page. 


. 


74 




75 




74 




75 




75 




58 




62 


53, 16 


32 




55 


66, 6 




7 




77 




77 




8o 


8o, 8i 


82 


• 53 


54 


6o 


6i 




56 




66 




6i 




7 




66 




65 




65 




122 




53 


53, 


58 




62 




58 



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